Virginia Business Litigation Lawyer Blog

Does an employer have any sort of ownership interest in its employees' tweets or Twitter following? This very current social-media question may be tested in a lawsuit originally filed last July in federal court in California by PhoneDog, a South Carolina-based company that reviews mobile phones and services online, against former employee Noah Kravitz. An amended complaint in the case, filed on November 29, 2011, has attracted considerable media attention.

When Kravitz worked for PhoneDog as a product reviewer and video blogger from 2006 to 2010, he tweeted under the handle @PhoneDog_Noah and attracted some 17,000 followers for his comments and opinions on Twitter. When he left the company, he continued tweeting under the name @NoahKravitz. But he didn't create a new account with that name; instead, he kept the account (with all its followers) and just changed the Twitter handle to @NoahKravitz. Eight months later, PhoneDog sued Kravitz, alleging that his continued use of the account and his tweeting to his followers constitute a misappropriation of PhoneDog's trade secrets, intentional interference with prospective economic relationships, and conversion. Phone Dog said that it had suffered loss of advertising revenue as a result and that Kravitz "was unjustly enriched by obtaining the business of PhoneDog's Followers."

PhoneDog essentially claims ownership rights due to the fact that it directs its employees to maintain Twitter accounts and instructs them to tweet links to PhoneDog's website, thus increasing PhoneDog's page views and generating advertising revenue for PhoneDog. PhoneDog said in the complaint that since Kravitz now works for TechnoBuffalo, a competitor of PhoneDog, he is exploiting PhoneDog's confidential information on behalf of a competitor. PhoneDog is seeking $340,000 in damages -- $2.50 per month per Twitter follower for eight months. Although PhoneDog said in the complaint that "industry standards" peg the value of a Twitter follower at $2.50 per month, the company did not give a source for that estimate. Nor did PhoneDog attempt to distinguish between people who followed Kravitz because of his connection to PhoneDog and those followers who are merely friends of his or enjoy his commentary.

In my view, this would be a solid case if Kravitz was bound by a non-competition or non-solicitation agreement. The allegations are essentially that Kravitz took a list of 17,000 PhoneDog followers and is now soliciting business from them on behalf of a new company. Such conduct would normally violate a standard non-solicitation agreement. In the absence of a noncompete, the case is weaker but raises some interesting issues. It's not quite the same as the typical case involving theft of customer lists because, unlike in most of those cases, Twitter followers' identities are not private. Kravitz didn't need to assume control over the Twitter account in order to solicit business from those followers; doing so just made things easier for him. At a minimum, I think the intentional interference claim will stick. Kravitz should have started a new Twitter account and invited people to follow him there, not simply changed the name on the account. That's risky business.

It's clear that dances composed by choreographers can be subject to copyright as creative works, just like paintings or photographs. It's also clear that no matter how creative a football player's evasive "spin move" can be, neither he nor his team can copyright it so as to prevent others from using it without paying royalties. What about a series of yoga poses? Where does that fit into the world of copyright? Three cases now pending in the U.S. District Court for the Central District of California involve that question, and although the issue remains very much in dispute, the U.S. Copyright Office has taken the view that yoga exercises are more like athletic activities or health regimens, which cannot be copyrighted, and less like dance routines, which can be.

In the lawsuits, Bikram's Yoga College of India, based in California, and its founder, Bikram Choudhury, have sued three yoga providers for copyright and trademark infringement, contending that they have unlawfully used the specific movements and poses of Choudhury's brand of yoga, known as Bikram Yoga. Bikram Yoga, performed for precisely 90 minutes in a room heated to 105 degrees Fahrenheit, has become quite popular in recent decades. Bikram Yoga includes 26 poses, two breathing exercises, and a carefully scripted dialogue.

Greg Gumucio is a defendant in one of the cases, along with the company he founded, New York City-based Yoga to the People. Gumucio is a former student of Choudhury. According to the complaint in that case, Choudhury "created an original work of authorship consisting of a series of instructions and commands that accompany, and correspond to, each poster of Bikram Yoga." This "original work is recited in a precise manner," according to the complaint, and the sequence of poses received protection from the U.S. Copyright Office on several occasions. Gumucio and the other yoga studio owners, Choudhury said, had infringed upon the copyrights.

Gumucio and his company replied that "Choudhury has no intellectual property rights in any method or posture," and that "the alleged 'Bikram methods' are utilitarian systems, incapable of copyright or trademark protection." Further, Gumucio replied, "there are no 'Bikram postures,' and each and every one of the yoga postures (or 'poses' or 'asanas') used in Bikram Yoga classes was developed and recorded hundreds, if not thousands, of years ago, and are in the public domain."

The defendants received very recent support from the Copyright Office. On December 9, 2011, Laura Lee Fischer, Acting Chief of the Performing Arts Division of the Copyright Office, wrote an email stating that "the Registration Program of the Copyright Office reviewed the legislative history relating to section 102(a) of the copyright law, and in conjunction with senior management, determined that exercises, including yoga exercises, do not constitute the subject matter that Congress intended to protect as choreography. Thus, we will not register such exercises (including yoga movements), whether described as exercises or as selections and ordering of movements."

This view represented an about-face from the office's previous position, which was that even if several yoga poses or exercises were in the public domain, the order in which they were to be executed could be copyrighted. Although the office's position is not binding on the U.S. District Court, it appears more likely now that yoga practitioners will be able to go ahead with their routines without fearing a copyright lawsuit.

Chanel, Inc., which like many other luxury-goods companies has been constantly plagued by counterfeiters, has taken its legal fight against unauthorized knock-offs to a whole new level. On November 14, 2011, acting at Chanel's request, U.S. District Judge Kent Dawson of the District of Nevada signed an order that not only prohibits hundreds of alleged trademark infringers from manufacturing or selling fake Chanel handbags, wallets, shoes, and the like - but also orders the defendants' domain names seized and transferred to the Web hosting company GoDaddy, which would direct them to a page describing the seizure. The temporary restraining order also orders that the counterfeiters' domain names be "de-indexed" by Google, Bing, Yahoo, and all social media websites, specifically mentioning Facebook, Twitter, and Google+.

Chanel, Inc. had filed suit against several websites for selling counterfeit versions of its merchandise. Chanel hired an investigative firm to purchase several items from three of the websites named as defendants in the lawsuit. The investigators then sent those items to a Chanel consultant who determined that the merchandise was not genuine Chanel. The consultant also examined other merchandise offered for sale on these websites and determined that none of the items offered were authentic Chanel products. The defendant websites were not authorized dealers of Chanel products and therefore were in direct violation of Chanel's trademark rights.

Chanel's trademark lawyers obtained this injunctive relief by, among other things, pointing out that counterfeiters use search engine optimization (SEO) just as legitimate companies do, and that it was necessary for the court to shut down their ability to use the Web to compete unfairly with Chanel. "Chanel does contend that it has the right to fairly compete for such search engine results space unfettered by unfair competition stemming from an illegal use of Chanel's trademarks," Chanel's lawyers wrote in the underlying motion.

But did the court even have the authority to cast such a wide net with its ruling? Facebook and Twitter, for example, have been ordered to de-index the infringing sites, but they were not even parties to the lawsuit. As the Ars Technica tech blog argues: "Missing from the ruling is any discussion of the Internet's global nature; the judge shows no awareness that the domains in question might not even be registered in this country, for instance, and his ban on search engine and social media indexing apparently extends to the entire world."

The court came down hard on the copycats and resorted to the extreme measure of attempting to have their existence scrubbed from the World Wide Web. The question now becomes whether it is the responsibility of the search engines and the social media sites to ensure that the offending websites do not show up as search results.

If a blog is successful and gains name recognition among the public, with whom is the brand associated in the minds of readers, the publisher or the primary author of the blog? Apparently not a lot of thought has gone into this interesting question, as the New York Times did not apply for a trademark for its popular "Motherlode" parenting blog until its primary author, Lisa Belkin, left the Times to create "Parentlode" at The Huffington Post. Now it will be up to the courts to determine whether the Times has exclusive trademark rights to the "Motherlode" name and similar-sounding derivatives.

The New York Times Co. sued the Huffington Post and AOL, its parent company, on November 4, 2011, in U.S. District Court in Manhattan, seeking both injunctive relief and damages. NYT's trademark lawyers argue in the complaint that the mark "Parentlode" is "clearly derived" from the Times' established "Motherlode" trademark and that it was "intended to create an association with Ms. Belkin's prior work" at the Times. According to the complaint, there is evidence that confusion already exists in readers' minds between the "Motherlode" blog, which the Times is continuing to publish, and the new "Parentlode" blog at the Huffington Post. On Twitter, for example, someone wrote (incorrectly, the Times argues) that "The NYT's Motherlode becomes HuffPo's Parentlode."

In her first "Parentlode" blog entry, Belkin referred to "Parentlode" as a "new name" that in a nonsexist manner includes fathers as well as mothers. The Times seized upon this statement and wrote that Belkin "clearly intended to create an association in the minds of readers between the two competing blogs, and further, [Belkin's] reference to the 'new name' was a deliberate attempt to mislead readers into mistakenly believing it was the same blog, albeit with a slightly different name and location."

Clearly, the Times has a strong argument that "motherlode" is a real word that has come to be associated with the widely read parenting blog published on its website. "Parentlode" does not exist in the English language and certainly seems to have been selected as a play on the Motherlode name. But if there is a trademark in the Motherlode name, who owns it? Trademark law is designed to permit consumers to identify the source of goods or services. The source of most of the articles on Motherlode was Ms. Belkin, and consumers may associate the name more with Ms. Belkin than the NYT. Still, the blog was published on the NYT's website and NYT alleges it came up with the Motherlode name and paid Ms. Belkin to write the content. From where I'm sitting, it appears the Times has a legitimate complaint.

Oleg Cassini was a French-born American fashion designer who created a wardrobe for Jacqueline Kennedy. Now, the company that he founded, Oleg Cassini Inc., finds itself embroiled in trademark litigation with Serta, Inc., over Serta's decision to name a particular mattress model the "Cassini."

The dispute arose when Serta unveiled a line of mattresses, to be sold exclusively at J.C. Penney stores, with names that were related to outer space. Among them were Gemini, Eclipse, Taurus, Moonscape, Nebula - and Cassini. Serta claimed that the name was inspired by Giovanni Domenico Cassini (1625-1712), an Italian-French astronomer and mathematician who was the first person to observe four of Saturn's moons. When the Oleg Cassini company found out about the existence of products such as the "Serta Perfect Day Cassini Firm Twin Mattress Set," it sent a cease-and-desist letter to the Serta company, declaring that it was "amazed" to see the Cassini name on the J.C. Penney website and stating that the mattress company does not have the right to use the "Cassini or Oleg Cassini" trademarks.

Serta responded by discontinuing the model immediately, but this was not enough for Cassini, the complaint contends. Cassini proceeded to demand that J.C. Penney ensure that no floor models (including close-outs) be sold under the Cassini name. In addition, Cassini threatened to sue for infringement if it did not receive "a reasonable offer of damages and a detailed plan for correcting the improper usage of the Cassini mark." Instead of offering to pay damages, Serta filed a declaratory judgment complaint in the Northern District of Illinois seeking a judicial ruling of non-infringement.

Serta's attorneys argue that Cassini "has no federal or common law trademark rights in the name "Cassini" in connection with mattress and/or bedding products" and that "there simply is no evidence that consumers were or would be confused as to the source, origin, affiliation or sponsorship of the Serta PERFECT DAY Cassini mattress model or that consumers would believe there was some connection with Oleg Cassini or his clothing or perfume line."

Timelines, Inc., a small Chicago-based Internet company, has lost the first round of its legal efforts to obtain a court finding that Facebook infringed on its "Timelines" trademark when it announced its much-ballyhooed new feature, "Timeline."

On Sept. 22, 2011, Facebook announced the "Timeline" feature, which will allow users to store and share their life events in chronological order on the site. Timelines, Inc., quickly filed a trademark infringement suit against Facebook, noting that it already has a registered trademark for the term "Timelines." This mark refers, among other things, to a website that allows users to record and share events and contribute descriptions, photos, videos, geographic locations, and links related to events and people.

Arguing that there was a significant likelihood of confusion between its existing online product and the one just announced by Facebook, Timelines filed its lawsuit in order to avoid, in the words of the complaint, "being rolled over and quite possibly eliminated by the unlawful action of the world's largest and most powerful social media company."

Timelines sought a temporary restraining order against Facebook's use of the term "Timelines," but on September 30, 2011, U.S. District Judge Edmond E. Chang denied the request. "Even assuming that Timelines has some likelihood of success, based on the present state of the record,...that likelihood is modest, and the other factors warrant denying the motion," Judge Chang wrote. "One question on the likelihood of success is the strength of the Timelines mark."

The judge ruled that even though Timelines had indeed been granted a federal trademark, that trademark is likely a "descriptive" one, since it simply "describes the service provided by Timelines' website, that is the creation on a website of a timeline for an event." Such "descriptive" trademarks are generally considered weak and do not enjoy the same protection as arbitrary or "fanciful" trademarks. The judge noted that if Timelines were to succeed in the litigation, it "would have to show that the term 'Timelines' has acquired a secondary meaning to customers such that they uniquely associate the term with the Plaintiff. On the current record, it is not at all clear that Timelines can make that showing."

Timelines may still be able to prove infringement, however, by focusing on the similarity between Timelines' website and Facebook's Timeline service. Consumers may be confused if the two services have the same name and do essentially the same thing.

United States District Judge John A. Gibney, Jr., sitting in Richmond, Virginia thought so little of the well-publicized shakedown tactics of the new wave of "copyright troll" lawyers--in this case practiced by Richmond lawyer Wayne O'Bryan--that he took it upon himself (without any Defendant asking for it) to issue a show-cause order against the lawyer demanding that he explain why his conduct should not be punished with Rule 11 sanctions.

The subject of the lawsuit at issue is Gangbang Virgins, a pornographic film allegedly downloaded by 85 unnamed "John Doe" defendants using popular peer-to-peer network BitTorrent. The Court initially granted the plaintiff permission to issue subpoenas to Internet Service Providers to learn the identities of the people behind the accused I.P. addresses. Later, however, Judge Gibney was apparently moved by some of the letters he received from the John Doe defendants. Several of the defendants, for example, notified the Court that the plaintiff made harassing telephone calls to them as soon as their identities were revealed, asking for a payment of $2,900 to end the litigation.

What the Court found particularly troubling was the lawyer's behavior after certain defendants filed motions challenging their inclusion in the case. Rather than proceed to argue the merits of the motions in court, he routinely dismissed them, apparently to ensure the Court did not actually rule on any of the motions so that he could continue to threaten others. That, the Court found, amounted to nothing more than a "shake down" and an abuse of the Court's resources.

"The plaintiffs have used the offices of the Court as a means to gain the Doe defendants' personal information and coerce payment from them," the judge wrote. "The plaintiffs seemingly have no interest in actually litigating the cases, but rather simply have used the Court and its subpoena powers to obtain sufficient information to shake down the John Does."

Accordingly, the judge issued an order asking the plaintiffs' lawyer to show cause why his behavior did not violate Rule 11 of the Federal Rules of Civil Procedure, which specifies that anyone filing a complaint in federal court certifies that the complaint "is not being presented for any improper purpose, such as to harass."

Judge Gibney also rejected the plaintiff's attempt to join 85 unrelated defendants to a single piece of litigation. Rule 20 of the Federal Rules of Civil Procedure permits a plaintiff to sue multiple defendants in a single proceeding if their behavior arises out of the same transaction, occurrence, or series of transactions or occurrences. Here, the only thing that the 85 had in common was that they all had allegedly downloaded the same movie using the same peer-to-peer network and the same protocol. Accordingly, Judge Gibney ordered that only the first defendant remain in this case, while all others be severed.

"The mere allegation that the defendants have used the same peer-to-peer network to copy and reproduce the Work - which occurred on different days and times over a span of three months - is insufficient to meet the standards of joinder set forth in Rule 20," the judge found.

Several exercise machines manufactured by ICON Health & Fitness, Inc., which permit a person to play blackjack, poker, and other games while exercising, don't infringe patents held by Fitness Gaming Corp. (FGC) for a device that combines an electronic game of chance and a piece of exercise equipment. This was the decision of U.S. District Judge Claude M. Hilton of the Eastern District of Virginia in an August 12, 2011, ruling on ICON's motion for summary judgment of non-infringement.

FGC had sued ICON for patent infringement, but the judge found, reviewing both the language of the patent and its prosecution history, that this claim had no substance and that as a matter of law, ICON hadn't infringed the patents. "The specification and prosecution history make clear what the claims require as a matter of law, and FGC has no evidence that the accused devices have what the claims require," Judge Hilton wrote.

The key point was that in obtaining the patent, FGC carefully specified that the patents involved a "combination of an electronic game of chance device and a piece of exercise equipment." FGC's patent application specifically equated the term "electronic game of chance device" with the term "legalized gambling device." The prosecution history showed that FGC made this limitation in order to respond to objections from the patent office that an existing patent, involving the combination of exercise equipment and a video display showing the progress of a bicycle on a track, had anticipated FGC's patent and that FGC had therefore applied for something that wasn't novel. FGC, in its own words, said that it only wanted a patent on an exercise machine that was combined with a gambling device.

FGC, in the patent office proceeding, disavowed any coverage of a device that "did not accept a wager from a user and permit a payout based on random events as governed by the controlling gaming and casino regulatory bodies." In other words, in order to use a machine of the type covered by FGC's patents, a person makes a wager of money by using a device such as a slot machine, and at the same time uses exercise equipment. As long as both the physical exercise and the gambling activity continue, the machine will continue to function.

The devices manufactured by ICON, however, involve no actual wagering. They do permit a user to play "Blackjack" or "Texas Hold 'Em" while exercising - but only for imaginary "credits" that have no monetary value. The devices don't accept cash, credit cards, or other forms of money, and don't pay out any money in the form of cash or any other form. They, in fact, are devices that don't accept wagers and don't make payouts based on random events as governed by gambling regulatory bodies - precisely the type of patent coverage that FGC had disavowed.

Accordingly, Judge Hilton rejected FGC's claim and found that as a matter of law, there was no infringement here.

Pincher's Crab Shack, a restaurant chain with seven locations in Southwest Florida, is taking on fast-food giant Wendy's in a trademark lawsuit. In a case filed in federal court on July 12, 2011, Pincher's asserts that Wendy's has stolen its trademarked slogan, "You Can't Fake Fresh," and used it in its advertising on television, radio, and the Internet. Wendy's actions "are likely to cause public confusion, mistake, or deception, and constitute trademark infringement," Pincher's attorneys wrote in their complaint, which alleges infringement, unfair competition, and false statements of origin under both federal and Florida law. Pincher's is seeking more than $2 million in damages.

"Defendants have openly and actively engaged in the unauthorized, infringing, unlicensed, and imitative use of the exact same trademark registered exclusively to Plaintiff, namely YOU CAN'T FAKE FRESH for the exact same services protected in Plaintiff's federal registration, namely 'restaurant services,' in the exact same geographic area in which Plaintiff uses its Mark, in commercial advertising and in exact and direct competition with Plaintiff," wrote Pincher's attorney Jennifer Whitelaw of Naples, Fla., in the complaint. Whitelaw was also quoted in the press as saying, "It's a great trademark. Our client worked hard to create it and our legal team worked hard to protect it and to successfully register it. From there, apparently it caught the eye of another suitor. Admiring our client's mark is understandable, but this is a bit more admiration than what the law allows."

Slogans are protectable under federal trademark law, provided they are used in such a way as to identify and distinguish the trademark owner's goods and services from those of others. Because the touchstone for liability in any trademark action is the likelihood of confusion, however, trademark infringement does not necessarily occur where slogans serve a subsidiary role to a service provider's "main" trademark. In other words, if "You Can't Fake Fresh" is always preceded in advertising by either "Pincher's Crab Shack" or "Wendy's," it may be difficult to prove consumer confusion.

But Pincher's also seeks to recover for trademark dilution, which does not require proof of actual (or even likely) confusion. The lawsuit claims that the association of the slogan with Wendy's products, since they are not the "genuine article" of Pincher's and may be inferior to Pincher's food, will "continue to damage and dilute the goodwill" that Pincher's has developed regarding its food.

A U.S. district judge in Virginia has adopted a magistrate judge's recommendation to deny a Minnesota man's motion to dismiss a trademark complaint against him in a case that centered around an automobile service center franchise, and to enter a judgment against the service center he operated in an amount to be determined by an accounting of its profits during the period it infringed the plaintiff's trademarks by using its logos after being denied franchisee status.

Precision Franchising LLC, a Virginia company, licenses an automobile service system and owns several associated trademarks. Precision permits its licensees to use its business methods and its marks. Motorscope, Inc., was one of Precision Franchising's franchisees. Lene Corporation, a Minnesota company with its principal place of business in Minnesota--a company that was wholly owned by Cary Lene-Tarango, the Minnesota businessman--attempted to purchase Motorscope's franchise and to assume Motorscope's rights and duties under the franchise agreement. Precision Franchising denied permission to Lene to make the purchase, finding that Lene's balance sheet did not show it to be financially sound.

Lene went ahead in any case and started to use Precision Franchising's trademarks as if it were indeed a franchisee. Since at no time was Lene a franchisee of Precision Franchising, Precision Franchising sued Lene and Tarango in the U.S. District Court for the Eastern District of Virginia under the Lanham Act for unfair competition and trademark infringement. Neither defendant filed an answer to the complaint. Tarango, however, filed a letter that was treated as a motion to dismiss, asserting that the court did not have personal jurisdiction over him since he is located in Minnesota and had no significant contacts with the Commonwealth of Virginia.

The magistrate judge, Thomas Rawles Jones Jr., as well as District Judge Anthony J. Trenga, found sufficient facts to assert personal jurisdiction over both defendants, in that Tarango had accessed Precision Franchising's proprietary electronic database, which is located in Virginia, and because Tarango sent an e-mail to a Precision Franchising employee, also located in Virginia, to follow up on such a request. These contacts were deemed sufficient to satisfy Virginia's long-arm statute.

In deciding to award damages against the service center, the court considered the following factors:

(1) whether the defendant had the intent to confuse or deceive, (2) whether sales have been diverted, (3) the adequacy of other remedies, (4) any unreasonable delay by the plaintiff in asserting his rights, (5) the public interest in making the misconduct unprofitable, and (6) whether it is a case of palming off.

Finding that these factors weighed in favor of granting damages, the court held that the plaintiff was entitled to damages "equal to Lene Corp.'s profits earned during the period it operated the service center and plaintiff's costs in bringing this action."

Earlier this week, a federal judge sitting in Alexandria, Virginia, ordered the owner of a now-defunct chain of Northern Virginia video stores to pay $555,000 in damages for willful violations of U.S. copyright law after he rented and sold unauthorized copies of copyrighted Korean-language DVDs and videos to customers. The individual in question, Young Min Ro, did not even attend his own trial, though he was represented by a lawyer.

The U.S.-based affiliates of the three largest television broadcasting corporations in South Korea sued Mr. Ro and other defendants for willful copyright infringement in United States District Court for the Eastern District of Virginia. They alleged and proved at a bench trial that Ro made illegal copies of their TV programs and continued to rent and sell copies of the programs to his customers even after his licensing agreement ended and he was no longer paying monthly fees to the broadcast companies. In a July 26, 2011, ruling, Judge Leonie M. Brinkema found that the evidence showed not only that Ro violated copyright law but that he did so willfully. Willful copyright violators are subject to heightened damages under a provision of U.S. copyright law. (See 17 U.S.C. 504(c)(2)).

The plaintiffs had chosen to seek statutory damages - those imposed at the judge's discretion within certain statutory limits - rather than precise economic damages based on measures such as the defendant's profits from the violations or the licensing fees that they did not pay. For damages purposes, the plaintiffs chose to focus on 37 specific instances of copyright infringement for which the judge had already found the defendants liable.

In determining the monetary damages for these 37 violations, Judge Brinkema noted that under copyright law, each violation results in a statutory damage award of at least $750, and in the case of a willful violation, as much as $150,000 per violation is possible. The judge used her discretion to award $15,000 per violation, for a total damage award of $555,000.

Judge Brinkema explained that the exact amount of damages is up to her "discretion and sense of justice" under case law and that the damages are intended to serve the purposes both of compensating the plaintiffs and deterring future violations. She reasoned that the damages should amount to at least $154,895 (the amount of the unpaid licensing fees) and should also include disgorgement of the illegally obtained profits. This figure was difficult to calculate since the video stores' records were incomplete but could be as high as $225,500. She noted that the actual economic damages should be only a "floor" for the recovery.

Another relevant factor was that in the past, Ro had been ordered to pay $307,500 for copyright violations in a similar case, as well as being sentenced to two years' probation, 60 days of home confinement, 200 hours of community service, and a $1,000 fine - and that these measures had apparently had no impact on his behavior. Those facts, the judge wrote, justify "a heightened damages award of significantly more than $307,500.00, in the hopes that this time, Ro might finally get the message." This amount, she said, was "reasonable and appropriate given the willful and repeated nature of the defendants' violations."

In a 63-page amended complaint filed on June 16, 2011, in federal court in San Jose, Apple Inc. is continuing to strongly press its contentions that Samsung Electronics Co.'s Galaxy smartphones and tablet computers infringe upon Apple's patents and trademarks for the iPhone and the iPad. In this new filing, Apple, which has long been known as a company that pursues its intellectual property claims vigorously, amplifies a complaint it filed a couple of months ago against Samsung.

"Instead of pursuing independent product development, Samsung has chosen to slavishly copy Apple's innovative technology, distinctive user interfaces, and elegant and distinctive product and packaging design, in violation of Apple's valuable intellectual property rights," Apple's attorneys wrote in the new complaint. An Apple spokeswoman has been quoted as saying, "It's no coincidence that Samsung's latest products look a lot like the iPhone and iPad, from the shape of the hardware to the user interface and even the packaging. This kind of blatant copying is wrong, and we need to protect Apple's intellectual property when companies steal our ideas."

A key focus of Apple's concern is several design patents that it owns for various aspects of the iPhone and iPad. These design patents, Apple said in the complaint, "cover the unique and novel ornamental appearance of Apple's devices, which include features such as the black face, bezel, the matrix of application icons, and a rim surrounding a flat screen."

The iPhone, according to the complaint, has a distinctive shape and appearance -- including "a matrix of colorful square icons with evenly rounded corners and a bottom row of colorful square icons set off from the other icons, which does not change as other pages of the user interface are viewed - which are the embodiment of Apple's innovative iPhone user interface." And this combination of elements "is distinctive and serves to identify Apple as the source of the iPhone products," the complaint says. Thus, the Samsung Galaxy products incorrectly leave the consumer with the impression that they are Apple products "based upon the design alone."

But what smartphone these days doesn't bear some resemblance to the iPhone? There are only so many ways to make a thin "bar" form-factor phone capable of running various applications. Do Apple's design patents give it the right to exclude all others from the market? We will be following this case closely.

On May 4, 2011, United States District Judge Claude M. Hilton of the Eastern District of Virginia issued an opinion rejecting a claim that LogMeIn Inc., a Boston-area computer-access company, had infringed a patent owned by Canadian competitor 01 Communique Laboratory Inc. Judge Hilton granted summary judgment of noninfringement for LogMeIn, finding that LogMeIn's devices that permit a communication session between a personal computer and a remote computer cannot, as a matter of law, be construed to infringe 01's patent, due to differences in the technology used by the competing devices.

In evaluating the patent claim, Judge Hilton reviewed the patent prosecution history and examined the way in which the Patent and Trademark Office and the inventor had previously described and understood the reach of the patent, including its limitations. The court found that LogMeIn's product was dissimilar enough from 01's intellectual property as to avoid any finding that infringement had occurred. Specifically, Judge Hilton found that 01's patent, by its own admission, was to be limited to a system in which only a single device perform the multiple duties of the so-called "location facility," including creating communication sessions, receiving a request for communication with the personal computer from the remote computer, locating the personal computer, and creating a communication channel between the remote computer and the personal computer. If several devices together performed those functions, the judge found, the patent's claims were not implicated.

"The accused LogMeIn products do not have any 'location facility' that locates a personal computer and 'itself' creates a communication channel between a remote computer and the personal computer," Judge Hilton wrote. "In briefing the Motion for Preliminary Injunction, 01 admitted that LogMeIn's products function in precisely the manner that 01 told the PTO the '479 Patent does not cover - that is, by distributing the functions of the 'location facility' among different devices," the judge added. No one component of the LogMeIn system itself performs all the needed functions of the "location facility" under the Court's construction of the term, the judge noted.

LogMeIn has about an 18 percent share of the market for products that permit a personal computer to obtain access to a remote computer over the Internet.

What kind of expense amounts to a "loss" under the Computer Fraud and Abuse Act (CFAA), and did a Virginia litigation-support company incur the required minimum of $5,000 in losses when it investigated an alleged breach of its computer systems, retaining the services of both an attorney and a computer forensics company to aid with the investigation? That was the issue recently before Judge T.S. Ellis III of the Eastern District of Virginia, who held that the investigative activities could support a CFAA claim, even if the expenses were not paid in cash.

The issue was particularly important to the plaintiff, Animators at Law, a graphics and technology litigation support company, because of the 13 claims it brought against two former employees and a competitor, all but the CFAA claim were based on state law, meaning that without it, there would be no basis for federal-court jurisdiction.

The CFAA provides for a civil action against anyone who intentionally gains access to a computer without authorization and obtains information from it. The CFAA has a minimum jurisdictional requirement of $5,000 in losses. Animators at Law claimed that its former employees conspired with a competitor to leave Animators' employment and join the competitor, taking with them confidential and proprietary information about Animators' services, projects, and clients.

When Ken Lopez, the president of Animators at Law, suspected that one of his company's laptops had been accessed without authorization, he brought in an outside company to engage in a forensic analysis of the laptop. Evidence produced during the litigation showed that Animators received services valued at $19,501.41 or more in connection with investigating the unauthorized access. However, Animators did not actually pay the contractor for its services, prompting the defendants to move for summary judgment on the basis that the $5,000 jurisdictional threshold had not been met. Animators countered that it provided services to the contractor in exchange for its forensic services, as a form of barter.

The court found that it "would be passing strange" if the contractor had spent over 60 hours analyzing Animators' data without any expectation of payment in some form. At a minimum, the court ruled, there was a triable issue of fact as to whether the services were provided on credit or in trade, given that there was an existing business relationship between Animators and the contractor. Because the CFAA does not require losses to be paid for in cash, this was sufficient to survive summary judgment.

A new line of women's footwear now being sold by Yves Saint-Laurent has high-end French shoe designer Christian Louboutin seeing red. Louboutin's companies, asserting that a new line of red Yves Saint-Laurent shoes violates their U.S. trademark, recently filed a trademark infringement suit in federal court in Manhattan against YSL. The lawsuit raises the interesting question: can a color be trademarked?

Louboutin's trademark lawyers explain that the issue isn't about ownership of a color so much as whether a shoe designer can have a proprietary interest in the use of distinctive red soles. According to the complaint, Louboutin first thought of the idea of painting the outer soles of his shoes red in 1992. Ever since then--for nearly two decades--every shoe in his collection has had that distinctive stylistic feature.

"Louboutin Footwear is instantly recognizable as a result of Plaintiffs' trademark red outsole," the complaint declares. "The location of the bright color on the outsole of a woman's pump is said to provide an alluring 'flash of red' when a woman walks down the street, or on the red carpet of a special event." The complaint provides a long list of celebrities who have worn the shoes and even includes two photos of the Carrie Bradshaw character on Sex and the City, played by Sarah Jessica Parker, wearing the shoes with the "alluring flash of red."

Louboutin applied for a U.S. trademark for the "lacquered red sole" and received a trademark in 2008. According to the complaint, the U.S. Patent and Trademark Office found that the mark "had acquired distinctiveness based on its many years of continuous use in commerce," consumer recognition, and media attention.

The Supreme Court has held that under some circumstances, a color can be trademarked. To win its case, Louboutin will need to show that red outsoles are associated with his design company by most women's high-end shoe purchasers. In other words, he will need to show that the red soles have acquired "secondary meaning" in the minds of his customers and prospective customers. (Think of brown delivery trucks. You associate them with UPS, right? That's a trademark.)

Louboutin will also need to show that the red color is not "functional" but decorative. The idea here is that no one manufacturer should be able to monopolize the use of a color that is an integral part of the way the product works (orange flotation devices, for example). It is not clear how the so-called "aesthetic functionality" test will apply to high-fashion items like shoes that cost more than $1,000 a pair.