California Trademark Attorney - California Trademark Lawyer

California - French fashion house Hermes International has recently lost a trademark infringement lawsuit against a Chinese company that registered a similar trademark. A Chinese court has also rejected Hermes' bid to register the Chinese translation of the famous French name.

Since 1997, Hermes has reportedly tried to convince China's trademark board to cancel a trademark held by Dafeng Garment Factory, a menswear company from southern China. That company had trademarked the term "Aimashi," which is the Chinese translation of Hermes. Despite registering the Hermes brand in China in 1977, the company reportedly did not register its brand name in Chinese at the same time. Ruling against Hermes, the Chinese court said that the French company had not provided evidence that the "Aimashi" trademark had been registered by the menswear company illegally or that the trademark was well known among consumers in China.

Roughly translated, the Hermes version of Ai Ma Shi means "officials who love horses," a tribute to the iconic company's equine origins. Dafeng's version of Aimashi, however features a rare Chinese character, which is part of the word agate -a type of crystal- and is often used for translating the names Mary and Emma into Chinese.

Hermes is not the only foreign company to face challenges in defending its trademark in China. Apple Computer recently lost the rights to use the "iPad" trademark in China after losing its trademark infringement battle to Proview Technologies. Earlier this month, former Chicago Bulls point guard Michael Jordan filed a trademark infringement complaint with a Chinese sportswear company for using a trademark that is the Chinese translation of his name. Although Jordan has never registered the Chinese translation of his moniker in China, Chinese law prohibits companies from freely using the names of celebrities, even if those people have not registered trademarks for their famous names.

Established in Paris in 1837, Hermes specializes in fine leather goods and handbags, lifestyle accessories, perfume, luxury goods, and ready to wear apparel. Known around the world among high fashion brand-conscious consumers, the rejected bid to register its name in Chinese will not likely affect Hermes' popularity or brand recognition among fashionistas in China.

California - It seems as though the Great and Powerful Oz has spoken once again. This time however, he is not making demands of Dorothy and her friends, but of major companies looking to cash in on its valuable trademarks protecting the 1939 classic, "The Wizard of Oz." Currently, Warner Brothers is embroiled in a trademark infringement lawsuit with Disney over the studio's upcoming film, "Oz: The Great and Powerful."

Over the past year, Warner Brothers has gone after a number of entities attempting to cash in on the timeless Oz characters. In October, Warner Brothers filed a trademark application for "The Great and Powerful Oz," one week after Disney filed a registration of its own. The United States Patent and Trademark Office (USPTO) suspended Warner Brothers' application on the grounds that Disney filed first. The studio has also been filing oppositions with the USPTO's Trademark Trial and Appeal Board over merchandising rights and other uses of the "Oz" trademarks.

Complicating things even more is the fact that the 1899 book written by L. Frank Baum, which the famous film is based on, is currently in the public domain. As one of the opposing party's trademark attorneys pointed out, the intellectual property at issue is taken directly from the book which is in the public domain and no longer protected by copyright laws.

Warner Brothers is standing its ground, maintaining that statements over its recent litigious activities are "akin to saying that anyone should be entitled to use the famous, widely licensed trademarks such as 'Harry Potter' or 'Roadrunner' merely because they were able to find those trademarks in a book."

The current list of companies that Warner Brothers is suing for trademark infringement include Disney, over "Oz: The Great and Powerful," Wicked 'Wiches Wickedly Delicious Sandwiches, operated as a California restaurant, various Halloween costume-makers using the "Wizard of Oz" brand, wine brands including, "Dorothy of Kansas and Toto Wine," "Ruby Slippers Wine," "Broomstick Wine," "The Lion's Courage," and "Flying Monkey Wine," and a publisher of a neuroscience book titled, "If I Only Had a Brain."

Just like Dorothy and Toto in the Wicked Witch's evil castle, Warner Brothers is running out of time to protect its Oz-related intellectual property. Disney's "Oz: The Great and Powerful" is scheduled to hit theaters March 8, 2013.

California - Cupertino, California based Apple Computer has filed to register for the trademark "macroscalar," its name for various patented methods for efficiently executing code on a processor, which strongly suggests the company's plans to begin commercially promoting its differentiating technology. The trademark application was filed for the classes including scientific, nautical, surveying, cinematographic, optical, weighing, measuring, and signaling, among others.

Apple reportedly has already registered the trademark in other countries, including Trinidad and Tobago, which are meccas for scuba-diving enthusiasts, possibly being related to the nautical class the trademark was registered for. With the trademark filed with the appropriate legal procedures in those countries, Apple has now moved to register the trademark in other major markets, including the United States.

One of the major markets Apple is seeking to register the "macroscalar" trademark is Hong Kong. This move leads many technology analysts to believe that Apple may be hinting at a forthcoming announcement at one or more new processing technologies.

"The macroscalar processor addresses this problem in a new way: at compile-time it generates contingent secondary instructions so when a data-dependent loop completes, the next set of instructions are ready to execute," as one technology expert noted. "In effect, it loads another pipeline for, say, completing a loop, so the pipeline remains full whether the loop continues or completes," added the analyst.

The trademark itself would cover a technology that has some remote similarities to Intel's Hyperthreading in finding ways to keep a processor running closer to its potential. As Apple has to rely on using off-the-shelf Intel processors in its Mac computers, if the macroscalar design is used, it would most likely apply to iOS devices. From a user perspective, this potential technology could support an environment for faster performance and lower power consumption, something Apple would definitely have interest in for its mobile devices.

Apple has not released any official statement regarding its motivations for registering the trademark for "macroscalar." However, its efforts in Hong Kong as well as the classes applied for have many in the technology world abuzz with anticipation.

California - A trademark infringement lawsuit recently tried in Europe is set to give trademarked companies more protection against competitors bidding on their names on Google AdWords.

The lawsuit was filed in UK courts by Interflora, an online flower delivery service, and alleges that rival floral business Marks & Spencer infringed on its trademark by sponsoring Google AdWords with the Interflora name. Its argument of trademark infringement was supported when Interflora was able to prove that Marks & Spencer was bidding on its name and gaining an unfair advantage as a result.

The most notorious example in recent history of firms seeking a competitive advantage at the expense of a rival was when Lowcostholidays ran advertising on Thomas Cook's name as the travel giant's financial trouble became public knowledge. Lowcostholidays is accused of using the controversial search phrase 'been Thomas Crooked?' in its search engine advertising in order to bid against adwords 'Thomas Cook' and 'Thomas Cook Holidays.'

By request, search engines send companies a Third Party Authorization Form to prevent competitors from bidding on their names. However Google is said to not widely support this service. As for the Interflora issue, the case concerned "double-identity" which was use by Marks & Spencer of an identical sign (Interflora) in relation to identical services, namely flower-delivery services. In its judgment on the case, the Court of Justice of the European Union has clarified the circumstances in which a sponsored link advertiser will be liable for trademark infringement when they use a keyword that has been registered as a trademark by a third party. In the U.S. Google has generally allowed parties to bid on a trademarked word, however, the resulting ad cannot use the trademark of another company in the actual text.

The Court reiterated the need for balance between the protection offered to registered trademarks and fair competition in the sector for the goods and services for which the trademarks are registered.

California - Electronic Arts, Inc., a leading American developer, marketer, publisher, and distributor of video games, is asking a federal judge to grant that it has a First Amendment right to depict real-life military helicopters in video games without the authorization of the aircraft's manufacturer. The plea stems from a trademark infringement dispute that erupted between Electronic Arts and Textron, the parent company of Bell Helicopter, after talks over use of the trademark broke down.

The lawsuit, filed Friday by the video game company in Northern California federal court, was a pre-emptive legal action against Textron. The complaint states that on December 21, attorneys for Textron demanded that Electronic Arts immediately stop its depiction of three Bell Helicopter craft in its 'Battlefield 3' video game.

Statements from the Electronic Arts lawsuit said, "The parties have been unable to resolve their dispute. Electronic Arts therefore has a reasonable and strong apprehension that it will soon face a trademark and/or trade dress action from Textron.

In its preemptive complaint, Electronic Arts maintains that its depiction of the three aircraft "are protected by the First Amendment and the doctrine of nominative fair use." The lawsuit also states that packaging for the Battlefield 3 video game features a disclaimer stating that the appearance of real-world weapons and vehicles does not represent any official endorsement by the manufacturer (Textron). The complaint also states that the Bell-manufactured aircraft are not highlighted or featured exclusively over any other vehicles or aircraft within the video game.

"The Bell-manufactured helicopters depicted in Battlefield 3 are just a few of countless creative visual, audio, plot and programming elements that make up Electronic Arts' impressive work, a first-person military combat simulation," says the lawsuit.

The preemptive action might seem unusual had it not been for June's landmark Supreme Court ruling that gives video games the same free speech protections as other expressive works like music, movies, and books. A preemptive lawsuit, also known as a declaratory relief action, occurs when a party initiates a lawsuit because it fears being sued. The purpose of this legal action is to decide rights so that a party can operate its business with certainty with regard to possible legal issues.

After the June Supreme Court ruling, Electronic Arts was victorious in a similar trademark dispute involving the unlicensed use of likenesses when a federal judge ruled that the video gamer's identifiable depiction of a real college quarterback, without his permission, was within its First Amendment rights to free expression.

California - An Administrative Panel (the "Panel") for the World Intellectual Property Organization ("WIPO") ruled that the California Milk Processor Board's ("Milk Board") domain name "www.gotmilk.com" was not infringed by the domain name "www.gotmilkads.com"owned by Ryan Leonard. The Milk Board implemented the famous "Got Milk?" phrase in the 1990s as an advertising campaign to get consumers to drink more milk. The widely successful campaign has now become a cultural tagline with as many as 1500 advertisement-related items for sale on Ebay. The derived domain name "www.gotmilk.com" receives over 1.8 million hits a year. Leonard registered the "www.gotmilkads.com" in 2009 but the website remained a parked website that only provided pay-per-click ads to third party websites unrelated to milk. Leonard made an offer to sell the website to the Milk Board for $10,000 but the two sides were unable to come to an agreement.

To cancel or transfer a domain name, the Uniform Domain Name Dispute Policy ("UDRP") requires a complainant to prove all three elements: the domain name registered is identical or confusingly similar to a trademark of the complainant's; the respondent has no rights or legitimate interests in the domain name; and the domain name has been registered in bad faith.

The Panel ruled that Leonard's domain name was confusingly similar to the Milk Board's domain name because Leonard's domain nameincorporated the "Got Milk" trademark in its entirely in his domain name. The Panel found that the use of "ads" as an addition or descriptive word in the domain name did not diminish this effect. The common test for "confusingly similar" compares the appearance, sound, meaning, and overall appearance between the trademark and the disputed domain name.

The Panel also ruled that Leonard had no rights or legitimate interests in his domain name. Leonard submitted a sworn statement that his intention was to use the website to sell "Got Milk?" advertisements. However, the Panel was unpersuaded because of Leonard's "passive holding" of the website for more than two years. Because the Panel found that Leonard's domain name was confusingly similar to the Milk Board's, they ruled that Leonard had more of a duty to establish a right or legitimate interest in "www.gotmilkads.com" rather than allow the website to remain unused for more than two years.

However, the Panel did rule that Leonard did not register his domain name in bad faith to exploit or profit from the Milk Board's trademark rights. The Panel found that Leonard was not a professional domain squatter and the use of his website was plausible since several advertisements of the "Got Milk?" tagline are sold and re-sold on online auction sites such as Ebay. The Panel concluded from previous cases that a finding of bad faith based on a passive holding of a website depends on the particular facts of a specific case. The Panel was unpersuaded that neither the pay-per-click revenue from Leonard's website nor his offer to sell his website to the Milk Board amounted to a bad faith attempt to exploit or profit money from the Milk Board's trademark.

California - Research in Motion, LTD ("RIM"), the Canadian telecommunications giant who produces the BlackBerry smartphone, filed a motion for dismissal of a trademark lawsuit against the company related to its use of the acronym "BBM." The suit filed earlier this month by BBM Canada, a Toronto-based radio and broadcasting company, alleges that the "BBM" name used by RIM causes confusion with its clients and employees.

BBM Canada was founded in 1944 and changed its name to BBM in the 1960s before settling on BBM Canada in the early 1990s. BBM Canada provides data and audience measurement analysis for radio and television broadcasting across Canada. BBM Canada currently employs 650 people with $50 million in annual financial revenue as opposed to RIM who employs 17,000 people and had $5 billion in revenue last quarter. BBM Canada's Chief Executive Officer, Jim Macleod, argues that small size of his company should not be a factor, "I'm sure to a really big company this looks like relatively small numbers, but to us it's a big deal."

Another issue is the global reach of Blackberry Messenger that has defined the acronym "BBM" in Canada and abroad. RIM boasts 50 million users worldwide of their BlackBerry smartphones and messenger service. MacLeod understands his company's limitations, "We have to be practical, they operate worldwide, we don't. But we're not prepared to just walk from our name." MacLeod argues that within Canada, he is often mistaken for a RIM executive and BBM Canada call operators receive up to 250,000 calls a year from Canadians who similarly mistake BBM Canada for RIM.

In a statement by RIM, they contend that they should be allowed to use the "BBM" acronym because "the two companies [RIM and BBM Canada] are in different industries and have never been competitors in any area." RIM also argues that under Canadian trademark law, two trademarks are eligible to co-exist if the services do not overlap. It's one of debate how separate and divergent the industries are for RIM and BBM Canada.

The Canadian Intellectual Property Office (CIPO) also weighed on this suit by filing a letter to the court stating the "BBM" trademark does not appear to be registrable after it denied RIM's trademark application for "BBM" in 2009. RIM maintains that its trademark application is still pending and that any "inference by BBM Canada that CIPO has refused RIM's BBM trademark application is quite frankly very misleading." McLeod disagrees with RIM's assessment of its trademark application with CIPO arguing that while RIM filed an extension of its trademark application in 2009, they have not pursued the matter any further.

California - The rap artist known as Young Buck has been ordered by a bankruptcy judge to liquidate most of his assets, including his trademarked rap name. The judge handling the case recently changed the rapper's bankruptcy status from Chapter 11 reorganization to Chapter 7 liquidation. The artist, whose legal name is David Darnell Brown, was close to inking a recording deal with Cash Money Records, which he claims would have given him the money to pay his debts and emerge from the Chapter 11 status.

Jeanne Burton, the trustee in charge of administering the assets from Young Buck's estate, said she will be selling the rapper's trademarked "Young Buck" moniker along with other assets. According to Burton, she was left with no other choice but to liquidate since there was no money left to pay debts and future bills. In a statement from Burton's attorney, she said, "There was no deal finalized within the time frame that was necessary for the case to remain in Chapter 11. There are insufficient remaining funds in the estate to pay the ongoing administrative expenses that are due," she added.

It appears that Buck's money troubles began in 2008, when he was prevented from recording music under his contract with G-Unit Records, after a falling out with G-Unit owner, rapper 50 Cent. The proposed multiparty deal that was in the works before the liquidation ruling would have settled Buck's contract dispute with G-Unit and released him to sign a deal with Cash Money so he could resume his rap career.

Buck, who entered Chapter 11 bankruptcy in October 2010, would have had the ability to pay his creditors with future revenues earned from the anticipated record deal. Buck insists that the trustee's move was shortsighted and counterproductive to his case.

"I just wish the trustee would understand that I'm actually in a position to actually work again," Buck stated. "Either way it goes, you're going to get paid. Cash Money provides me with a job to pay off the bankruptcy and creditors." Buck also said that his "Young Buck" rap name was not given to him by G-Unit, but that he garnered the nickname as a young teenager, therefore he shouldn't be forced to give it up. Brown filed for the "Young Buck" trademark back in February 2004.

It's not clear what impact the loss of the trademarked name will have on the Cash Money deal.

California - In Malaysia, the Kuala Lumpur High Court recently upheld a trademark infringement claim over archived jewelry items on a community website. The plaintiff alleged that the defendant had infringed on its JACMOLI trademark by failing to delete from the archives of its website www.ytlcommunity.com, several articles featuring the plaintiff and the plaintiff's JacMoli boutique and trademark. The plaintiff is the registered owner for the JACMOLI trademark in relation to jewelry products in Class 14 in Malaysia.

The articles were written back when the plaintiff was a tenant at the defendant's Starhill Gallery Shopping Centre. Not surprisingly, the defendant is denying any infringement on the JACMOLI trademark or that it passed off its goods or business as that of the plaintiff in any way. In its defense, the defendant is contending that the articles at issue on the YTL website are merely archives and are only used as a record of past events or historical facts pertaining to its Starhill Gallery Shopping Centre, and that the articles were originally published to promote the plaintiff when the plaintiff was a tenant at the shopping centre.

In its decision, the court ruled in favor of the plaintiff on the basis that it had established its claim for trademark infringement and its claim that the defendant passed off its business to be related to the plaintiff or plaintiff's trademark, therefore awarding the plaintiff damages. The court also dismissed the defendant's counterclaim and is requesting it pay for court costs.

California - Austrian-owned Red Bull Energy Drink has lost a trademark infringement dispute with the 214-year-old Dutch company, Frisdranken Industrie Winters B.V..

The legal battle, which Red Bull took all the way to the European Union's highest court, was sparked over the Frisdranken's use of logos and text such as 'Bullfighter' and 'Red Horn' while filling cans of "Smart Drinks" packaged for another company. Red Bull, known for its red bull logo, sued the Dutch company for trademark infringement.

However, much to Red Bull's dismay, the high court did not buy its argument, with the European Union Court of Justice declaring, "A service consisting of the mere filling of cans bearing a sign protected as a trademark is not use of that sign which is liable to be prohibited. The service provided by Winters consists of the filling of cans and this service does not have any similarity with the product for which Red Bull's trademarks were registered."

Manufactured and sold by the Austrian Red Bull GmbH, Red Bull was launched in 1987 by the Austrian entrepreneur Dietrich Mateschitz and is currently the most consumed energy drink in the world. Its slogan is "Red Bull gives you wings" and is marketed through advertising, sports team ownership, tournament sponsorship, and celebrity endorsements. In 1989, Red Bull was introduced to Hungary and Slovenia, its first international markets and the drink eventually expanded to the United States in 1997. In 2008, Forbes magazine listed founder Dietrich Mateschitz as the 260st wealthiest person in the world, with an estimated net worth of $5.0 billion.

California - S.C. Johnson & Son, Inc. (SC Johnson) announced today that it has entered into a Trademark Licensing Agreement with CTI Industries Corporation, a manufacturer and marketer of packaging and storage bags and pouches, metalized balloons, latex balloons, novelty gift items, and printed laminated items. Under the trademark agreement, CTI will be licensed to manufacture and sell a line of vacuum sealing machines and pouches under the Ziploc brand and trademark.

One of the top manufacturers and marketers of metalized and latex balloons, CTI Industries develops, produces, and markets bags and pouches for storage and packaging purposes and makes laminated and printed films for commercial applications. CTI distributes its product lines throughout the United States as well as in other countries. CTI was founded in 1976 and is headquartered in Lake Barrington, Illinois.

The licensed Ziploc product line under the agreement will include vacuum sealing machines manufactured solely for CTI and plastic pouches for use to electronically seal the air out of food items. The products will be sold in a number of large retail outlets across the country.

Founded in 1886 as a parquet flooring company, in addition to Ziploc, SC Johnson manufactures and markets other household brands such as Saran, Pledge, Scrubbing Bubbles, Windex, Shout, Raid, and Off!. In the past, SC Johnson has negotiated many patent and trademark licensing agreements with manufacturers and distributors of household products.

In 2001, SC Johnson created an environmental classification system called the "Greenlist" to change the way it measures, tracks, and improves its products, with its commitment to environmental responsibility the primary goal. SC Johnson has shared its "Greenlist" process with the United States EPA, China's Ministry of Environmental Protection, Environment Canada, industry associations, universities, and corporations and these entities partner with suppliers to identify and develop ingredients that are more environmentally sustainable. Currently, SC Johnson has a licensing agreement with Five Winds International to make the "Greenlist" system available to other companies royalty-free, provided they comply with Five Winds' terms.

California - The China Trademark Law of 2001 does not require that a registered trademark be used in commerce by the registrant (or licensed use by a third party) in order to claim exclusive trademark rights against unauthorized use. However, recent case law has placed an even greater burden on trademark registrants to prove actual use of their trademarks, both in order to prove that consumer confusion exists and also as a prerequisite for damage claims. Thus, the trend has resulted in the third amendment of the Trademark Law.

Article 52 of China's Trademark Law of 2001 states that:

"A person infringes the exclusive right to use a registered trademark if he..."

(1) uses a trademark that is identical with or similar to a registered trademark in
Relation to identical or similar goods without consent of the owner of the
Registered trademark.

Currently, the law does not indicate that a trademark registrant have used the trademark in commerce in order to claim infringement. Chinese courts have heard and rejected numerous defenses that were based on the claim that the registrant had not actually used the trademark in business. However, some courts are reaching a different conclusion, as a result of bad-faith litigants taking legal action against large companies, claiming trademark infringement even thought they had never used the trademarks in commerce, and seeking legal damages over the alleged infringement.

In the 2008 infringement case over the trademark RED RIVER, the Supreme Court in China threw out two previous court decisions and held that since the plaintiff had not used its registered trademark RED RIVER on beer, the trademark had failed to establish a uniqueness of its own and was unable to distinguish itself from others. Therefore, the Court concluded, consumers would not associate or confuse the defendant's RED RIVER beer with the plaintiff's trademark.

The draft amendment of the Trademark Law deviates from previous law in that it changes the status of the plaintiff's alleged loss if the trademark has not been used in commerce, using the following logic:

(1) If the registrant has not actually used the trademark for commercial use, then the unauthorized use of the trademark by a third party would not cause consumer confusion.
(2) Since no confusion would exist, the trademark registrant would not have suffered any loss.
(3) If no loss has been suffered by the plaintiff, then no damages would be due.

This major change will undoubtedly cause many foreign companies to change their strategies concerning intellectual property in China. The amendment to the China Trademark Law will surely give foreign companies a reason for commercial use of their registered trademarks in China, in order to maintain validity of their registrations and to have proof of use before taking legal action against any unauthorized third parties.

California - The parent company for the Association of Volleyball Professionals, now out of bankruptcy, is suing the city of Manhattan Beach, CA and the organizers of the 2011 Manhattan Beach Open for trademark infringement, false advertising, and unfair competition.

Last summer, USA Volleyball and the International Management Group (IMG) partnered with the city of Manhattan Beach to host the professional beach volleyball tournament, sponsored by Jose Cuervo.

DFA PVA II Partners, LLC, the corporation that owns the AVP, is alleging in its lawsuit that by hosting the Manhattan Beach Open, the organizers created "confusion, mistake or deception as to the origin, sponsorship or affiliation of the tournament," therefore depriving the company of revenue that rightfully belongs to it. The complaint also alleges that the organizers "used a confusingly similar imitation" of the AVP logo to market the event, "furthering the false impression that AVP was the source of the tournament."

The company is demanding that the case by decided by a jury.

According to the Manhattan Beach City Attorney, the city has hosted the Manhattan Beach Open volleyball tournament for 51 years, therefore making it the owner of the trademark. Online records indicate that DFA PVA II registered the Manhattan Beach Open trademark in January 2009.

Apparently, before it declared bankruptcy in 2009, AVP obtained the federal trademark registration for "Manhattan Beach Open" for entertainment services, namely, arranging, organizing, and conducting athletic competitions, exhibitions, and community festivals and cultural events in the nature of volleyball games, tournaments, and competitions," as indicated by the United States Patent and Trademark Office website. However, federal registration is not the end all for establishing rights to a trademark, and first use often takes precedence.

In its contract with the organizers of the event, USA Volleyball and the IMG, the city of Manhattan beach agreed to "defend, and hold harmless USA Volleyball and IMG from any and all claims, liabilities, expenses, and damages of any nature, including attorneys' fees" that may come as a result of the contract, including "any legal action by a third party against the use by organizer of the name 'Manhattan Beach Open,'".

"We'll be handling the litigation," the city attorney stated.

California - An attorney representing a Little Rock marketing firm argued this week before the state Supreme Court that his client should be allowed to proceed with a trademark infringement lawsuit against the Arkansas State Lottery Commission.

After hearing arguments, the state Supreme Court did not immediately issue a ruling in the trademark infringement lawsuit filed by Alpha Marketing against the Lottery Commission. In its lawsuit, Alpha Marketing is seeking exclusive rights to use the terms, "Arkansas Lottery," "Arkansas Lotto," and "Lottery Arkansas."

Ed Dozier, owner of Alpha Marketing, filed the complaint after the Arkansas Attorney General's Office warned him that he would be hit with a lawsuit if he continued to use the terms. The Attorney General's Office claimed that the Secretary of State's Office should have never granted the trademarks in the first place, since lotteries were not legal in the state until 2008 when voters approved a constitutional amendment to allow a state lottery to raise funds for college scholarships.

Earlier this year, Judge Wendell Griffen of Pulaski County, denied a motion by the state to dismiss the lawsuit on the grounds that the lottery has sovereign immunity as a state agency. The state then appealed the decision to the high court. However, the attorney for Alpha Marketing argued in court Thursday that the state lottery is run as a for-profit business and therefore, sovereign immunity does not apply.

"It's a state-run monopoly. They charge for tickets and they deduct their operating expenses and they make a profit," the attorney stated.

Assistant Attorney General Mark Ohrenberger, challenged the attorney's argument by saying that if the Lottery Commission was truly a for-profit entity, then the state Department of Finance and Administration could be labeled a for-profit business because it collects taxes. Ohrenberger went on to say that one hundred percent of the lottery's profits must go for college scholarships.

During Thursday's arguments, the judges questioned whether the issue was presented to them properly, indicating that Judge Griffen had not stated in his order his reasons for denying the motion.

It would appear that the state of Arkansas would have mud on its face if it didn't even have the right to use the Arkansas Lottery trademark for its own state-run lottery.

California - A California Federal Court has raised, on its own motion, the issue of personal jurisdiction in Facebook's trademark infringement suit against Faceporn. A U.S. District Court in San Francisco placed the burden on the social networking site Facebook to show why Norway based Faceporn is subject to personal jurisdiction in California. The court will dismiss the action if Facebook is unable to show cause to subject Faceporn to jurisdiction in California.

Personal jurisdiction requires sufficient minimum contacts with the forum state including but not limited to advertising in the forum state, directing sales toward the forum state, and other actions evidencing that defendant purposefully availed itself of the protections of the forum state. An analysis of personal jurisdiction is also based on traditional notions of fair play and justice. The court determines whether it is fair to force a non-resident defendant to litigate an action in another jurisdiction. In this case, Facebook initially alleged that Faceporn has more than 250 active users in California and 1000 users in the United States. Facebook further claimed that Faceporn directed business to the U.S. by registering a .com domain name.

The District Court however, noted that these allegations alone were not sufficient to confer jurisdiction on Faceporn. The District Court Judge cautioned that without facts demonstrating that California residents constituted a substantial percentage of Faceporn's business, the lawsuit would be dismissed for a lack of personal jurisdiction. The 9th Circuit cited Mavric Photo v. Brandtech in which the appellate court found that not all material on the internet was aimed at each jurisdiction simply because it was accessible there.

Facebook's trademark infringement suit originated when Facebook discovered Norwegian company Retro Invent's Faceporn.com site, which redirects to Faceporn.no. Faceporn is an adult entertainment, pornographic, and social networking site. American social networking giant Facebook claims that Faceporn's name and domain name creates a likelihood of customer confusion and may deceive consumers into believing that Faceporn and Facebook are associated.