December 2012 Issue

Civil Cases

CollegeSource, Inc. v. AcademyOne, Inc.,
2012 WL 5269213 (E.D. Pa. Oct. 25, 2012)
Eastern District of Pennsylvania applies the Ninth Circuit’s Network Automation test for keyword cases, and finds no likelihood of confusion where defendant did not use plaintiff’s trademark in the paid advertisements and those ads were segregated from the natural search results.

CYBERsitter LLC v. Google, Inc.,
2012 WL 5873650 (C.D. Cal. Oct. 24, 2012)
Despite contrary decisions by other district courts, the Central District of California holds that the forum-selection clause in Google’s AdWords user agreement did not apply to the plaintiff’s keyword-infringement claims and denies Google’s motion to transfer.

Diller v. Barry Driller Inc.,
104 USPQ2d 1676 (C.D. Cal. Sept. 10, 2012)
California federal court preliminarily enjoins “Barry Driller” online services, finding likely infringement of Barry Diller’s Lanham Act rights and rights of publicity.

Fleischer Studios, Inc. v. A.V.E.L.A., Inc.,
No. CV-06-6229 (C.D. Cal. Nov. 14, 2012)
Central District of California breathes new life into the doctrine of aesthetic functionality, holding that use of BETTY BOOP wording in connection with permissible uses of Betty Boop images on apparel and related merchandise is either aesthetically functional or a protected fair use, and is noninfringing.

Oriental Fin. Grp., Inc. v.
Cooperativa de Ahorro y Crédito Oriental,
698 F.3d 9 (1st Cir. Oct. 18, 2012)
First Circuit rules as matter of first impression that doctrine of progressive encroachment may be applied to preclude the affirmative defense of laches in trademark-infringement actions.

Tempur-Pedic Int’l, Inc. v. Angel Beds LLC,
2012 WL 290980 (S.D. Tex. Nov. 6, 2012)
Southern District of Texas rejects argument that fraud-like conduct is an element of unfair competition under Section 43(a), holding that specific and detailed allegations of intentional wrongdoing are not required under liberal pleading requirements of Fed. R. Civ. P. 8.