This year continues to be an interesting year for trademark law.  Two significant issues we are watching and will be keeping you apprised of are: keyword advertising on the internet and contributory trademark infringement. 
 
In the thriving business of online keyword advertising, the second circuit recently held that Google's keyword suggestion tool was a "use in commerce" and created a likelihood of confusion by incorporating the trademark of a third party.  This ruling is particularly important to businesses with an internet presence. If you utilize your competitor's tradename or trademarks (or your competitors are using yours) as keywords for internet searches and/or for pop-up ad purposes, you could be the perpetrator (or victim) of infringement.   We expect many more trademark infringement cases involving keyword and pop-up advertising...stay tuned to learn how to protect your marks and yourself from infringement.  
 
Contributory trademark infringement cases are popping up more frequently as e-commerce continues to grow.  For example, a Web host whose customer was selling knock-off designer handbags found itself on the hook for a multi-million dollar jury verdict for trademark infringement.  Web hosting service providers beware!  For interactive websites - consider policies and protocol for "notification" and "takedown" procedures to better insulate yourself from potential liability. 
 
Copyrights 

Limewire, a popular peer-to-peer file-sharing service, has been found liable for copyright infringement.  The court held that Limewire fostered infringement of copyrighted materials, including music recordings.  No longer are only the users of file-sharing software liable.  The courts have recently and consistently extended such liability to the providers of such services.  Be careful for advertent, as well as inadvertent, contribution to the sharing, displaying or downloading of copyrighted materials.

 

Enforcing the Uniform Trade Secret Act, a court awarded $50 million to a company whose employee and supplier copied and utilized the company's secret manufacturing process.  The court highlighted the importance of the trade secret owners' confidentiality agreement and other "reasonable efforts" undertaken to protect the trade secret.  Calling something a trade secret isn't enough.  Companies must protect trade secrets with confidentiality agreements and limit disclosure through other practical strategies.  Then, if a misappropriation occurs, the trade secret owner will be in a better position to obtain redress.

 

Technology met employment and constitutional law in the Supreme Court's City of Ontario vs. Quon decision.  The highest court held that Quon, a City employee, had no expectation of privacy in text messages sent and received on an employer-issued pager.  The text messages were monitored by the City and led to disciplinary action against Quon.  A pivotal fact was the City's written policy that employees had no expectation of privacy when using the City's equipment.  "Expectation of privacy" policies involving the use of an employer's computers, phones and other technology and equipment are recommended and should be carefully drafted. 

Watch for more on these and other IP decisions of interest in upcoming issues of LCOJ's IP SmartPractice.