Seattle Trademark Lawyer

Not to lean too heavily on the New York Times, but I enjoyed a just-in-time-for-Christmas article it published last week on counterfeiting.

The paper reported the feds recently made 177 seizures in the U.S. and Mexico that netted 327,000 counterfeit items worth $77 million and led to 33 arrests (including three in South Korea). The haul was a bit unusual because it included a large number of low-end goods: Christmas lights, football jerseys, and Angry Birds toys. Many of the fakes pose a health risk.

“Counterfeit batteries are going to explode, a counterfeit electrical cord might catch fire and burn the house down,” the director of Immigration and Customs Enforcement said. “Toys are always a concern. You never know what’s going into the actual manufacturing in terms of the chemicals. Obviously you don’t know whether they have been tested in terms of, are they safe for toddlers.”

That’s equally true with counterfeit medicine and counterfeit air bags, which he also mentioned.

The moral of the story is it’s not all about fake Rolexes and knock-off Gucci hand bags for counterfeiters any more, though there are plenty of those out there as well.

Chicago… I proclaim it the most beautiful city in America.

I just made a crack commando visit to the Windy City.

Or as I have decided, the most beautiful city in America.

I long thought San Francisco deserved that honor, but I was wrong.

Chicago. What a town.

I blew in town for barely 24 hours to talk about the Rosetta Stone v. Google keyword advertising appeal. With oral arguments scheduled to be heard in Richmond tomorrow, it was a pretty timely discussion. I was asked to focus on Rosetta Stone’s side, which was easy. Of course, the Eastern District of Virginia got the result right: Google shouldn’t be liable for selling trademarks as sponsored links in its search engine results. But taking Rosetta Stone’s position in the Association of Intellectual Property Firms’ panel discussion was a no-brainer given how badly the Eastern District of Virginia stumbled on the way to the right result.

One of the issues in the case was contributory infringement — whether Google should be liable for enabling counterfeiters to infringe Rosetta Stone’s trademark. That led to a discussion of the Ninth Circuit’s Sept. 9 decision in Louis Vuitton Malletier, S.A. v. Akanoc Solutions, Inc. — which also involved contributory liability.

In that case, Louis Vuitton complained to Web host Akanoc Solutions that some of Akanoc’s customers had been selling counterfeit Louis Vuitton merchandise on their Web sites. Indeed, Louis Vuitton complained on 18 separate occasions, and Akanoc did not act on the warnings.

The result? The Northern District of California jury charged Akanoc with actual knowledge of the trademark infringement and slapped it with a damages award of $31,500,000.

The Ninth Circuit pared the award back to $10,500,000, but affirmed the jury’s finding of contributory infringement.

In doing so, the court found: “Plaintiffs asserting contributory trademark infringement claims must prove that defendants provided their services with actual or constructive knowledge that the users of their services were engaging in trademark infringement. An express finding of intent is not required.”

The court found that Akanoc’s continuing to allow its customers to operate Web sites about which Louis Vuitton complained 18 times made Akanoc separately liable.

Back to Rosetta Stone. According to Rosetta Stone’s appellate brief, the language software company provided evidence it complained to Google about 200 instances of sponsored links advertising counterfeit product. Yet, after receiving such notice, Google continued to sell Rosetta Stone trademarks as keywords to those same advertisers. The court seemingly ignored this evidence when it granted Google’s motion for summary judgment.

Louis Vuitton ought to give the Fourth Circuit pause tomorrow when it considers the propriety of the district court’s decision.

The case cite is Louis Vuitton Malletier, S.A. v. Akanoc Solutions, Inc., __ F.3d __, 2011 WL 4014320, Nos. 10-15909 and 10-16015 (9th Cir. Sept. 9, 2011).

McDonald’s vs. McFoxy: Seems worth a trip to the Ukraine just to see

This is the white whale for trademark infringement safarists.

Forget McDonald’s and McDowell’s of “Coming to America” fame. (STL post here.) That’s just a movie.

This is real, and I’m tempted to book my next vacation to the Ukraine just to see it for myself: side-by-side McDonald’s and McFoxy hamburger restaurants.

From Anthony Bourdain’s “No Reservations” travel/eating/drinking show on the Travel Chanel, we’re treated to this super-sized helping of trademark infringement. It’s so audacious, you have to respect it.

As Tony puts it: “So powerful is the magnificence, the unassailable excellence of the McFoxy brand, and so antiquated and promising the trademark laws of Ukraine, that not even the dark forces of the evil floppy-clown-shoed one dare challenge this bold, in-your-face expression of the competitive free market spirit.”

I’m loving it!

Counterfeiting again.

That’s three posts in a row, but who’s counting?

This time counterfeiting got the perpetrator booted out of the country.

In Rodriguez-Valencia v. Holder, the Ninth Circuit last week upheld a Board of Immigration Appeals’ decision finding petitioner Jose Rodriguez-Valencia removable from the country and denying his application for cancellation of removal.

Mr. Rodriguez-Valencia was convicted of “willfully manufacturing, intentionally selling, and knowingly possessing for sale more than 1,000 articles bearing a counterfeit trademark” in violation of section 350 of the California Penal Code. The BIA found the convictions constituted an aggravated felony as an “offense relating to … counterfeiting,” justifying the immigrant’s deportation to his home country.

Mr. Rodriguez-Valencia argued that the word “counterfeiting” in the statute was limited to counterfeiting money. He also argued the BIA needed to find that he had a specific intent to defraud. 

The BIA disagreed, and so did the Ninth Circuit, which found that an intent to defraud is inherent in the type of counterfeiting in which Mr. Rodriguez-Valencia engaged.

“While there may be some counterfeiting crimes that do not require an intent to defraud, assuming arguendo that the generic offense of counterfeiting requires such an intent, California Penal Code § 350 ‘is an inherently fraudulent crime.’ Indeed, ‘[a]ll of the conduct punished by [California Penal Code] § 350, ‘willfully manufactur[ing], intentionally sell[ing], or knowingly possess[ing] for sale any counterfeit … mark, ‘involve[s] knowingly false representations made in order to gain something of value.’ Because ‘[t]he commission of the crime necessarily defrauds the owner of the mark, or an innocent purchaser of the counterfeit items, or both, we ‘have difficulty distinguishing such intent from a general intent to defraud.’”

The case cite is Rodriguez-Valencia v. Holder, 2011 WL 2899605, No. 09-72060 (9th Cir. July 21, 2011).

Forget counterfeit purses.

What about counterfeit Apple stores?

I saw some brazen trademark infringement when I was in China (here, here, and here), but nothing this bold.