23210509

RECENT DEVELOPMENTS IN INTELLECTUAL PROPERTY LAW
Author(s): Joel W. Mohrman, R. Andrew Patty II, Randolph Stuart Sergent and Anderson
Cao
Source: Tort Trial & Insurance Practice Law Journal, Vol. 46, No. 2 (WINTER 2011), pp. 461482
Published by: American Bar Association
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RECENT DEVELOPMENTS IN INTELLECTUAL

PROPERTY LAW
Joel W. Mohrman, R. Andrew Patty II, Randolph

Stuart Sergent, and Anderson Cao
I. Introduction.
461
II. Patents
461
III. Trademarks
470
IV. Copyrights.
470
V. Insurance...
476
VI. Conclusion.
482
I. INTRODUCTION
The rapid changes in technology and society, coupled with ever-increasing
value of intellectual property to businesses, has caused courts to respond

accordingly. In the past year, the U.S. Supreme Court and the circuit courts
of appeal have continued to issue opinions attempting to keep the estab

lished body of intellectual property law applicable to modern facts.
II. PATENTS
In a continuing trend, the U.S. Supreme Court appears to be setting the

stage for a high level of activity this coming year in the area of patent
law, based upon the number of granted writs. In 2009-2010, the Supreme
Court's most notable decision was Bilski v. Kappos, a case addressing the
Joel W. Mohrman and Anderson Cao are members of the Houston office ofMcGlinchey
Stafford PLLC. Randolph Stuart Sergent is Senior Director & Associate General Counsel
with CareFirst Blue Cross ir Blue Shield of Maryland. R. Andrew Patty II is a member in
the Baton Rouge office ofMcGlinchey Stafford PLLC. Messrs. Mohrman and Cao are vice
chairs of the TIPS Business Litigation Committee, and Mr. Mohrman also is a vice chair
of the TIPS Intellectual Property Law Committee.
461
462 Tort Trial ir Insurance Practice Law Journal, Winter 2011 (46:2)
standard applicable in determining whether a process is patent-eligible

under 35 U.S.C. 101.1 Bilski claimed a method for hedging risk in com
modity trading due to price fluctuations, with particular application in the
energy markets.2 The patent claims were rejected as ineligible under 101,
and the U.S. Patent Office's Board of Patent Appeals and Interferences af
firmed on the basis that the claims failed to employ an apparatus, merely
manipulated an abstract idea, and solved a purely mathematical problem.3
The Federal Circuit en banc affirmed the Board's decision by rejecting its
prior "useful, concrete, and tangible result" test for process claim patent
eligibility, and holding instead that a claimed process is patent eligible "if
(1) it is tied to a particular machine or apparatus, or (2) it transforms a par
ticular article into a different state or thing."4 Applying this "machine-or
transformation test" to the Bilski claims, the Federal Circuit found those
claims to be ineligible for patenting.5
In a five-to-four decision revealing a fractured Supreme Court, Justice
Kennedy wrote in the majority opinion that the prior "machine-or-trans

formation test" adopted by the Federal Circuit to deny patent eligibility
to the Bilski process claims was not the exclusive test for patent eligibility
under 101.6 Instead, the Court referred to that test as a nonexclusive,
but useful, analytical tool in some cases.7 The Court further held that the
claimed process at issue was directed to an abstract idea.8 As an abstract

idea, the claimed process was, in accordance with precedent, ineligible for
patenting under 35 U.S.C. 101.9

In affirming the result below by determining that the claimed method
for hedging commodities trading risks arising from price fluctuations was
an abstract idea ineligible to be patented, the Court avoided pronounce

ment of any single test for process claim patent eligibility. It also did not
set forth any particular test for holding a claimed process invention to be
merely an "abstract idea," but suggested that there might be claims to pro
cesses (including business processes or methods) that do not meet the "ma
chine-or-transformation test" but are nevertheless patent-eligible under

101. By avoiding the harder task of defining any "abstract idea" standard,
or a single standard for patent eligibility of claimed processes under 35

U.S.C. 101, the Court left it to patent applicants and the lower courts to
1. 130 S. Ct. 3218 (2010).
2. Id. at 3223.
3. Id. at 3224.
4. In re Bilski, 545 F.3d 943, 954 (Fed. Cir. 2008) (en banc).
5. Id. at 963-66.
6. Bilski, 130 S. Ct. at 3226.

7. Id. at 3227.
8. Id. at 3229-30.
9. Id. at 3231.
Intellectual Property Law
463
determine how one might identify or claim a patent-eligible process that is

devoid of the use of a machine or apparatus, and does not involve a physical
transformation of matter.
The proof required to sustain a finding of inducement of patent in

fringement was addressed by the Federal Circuit in SEB S.A. v. Mont
gomery Ward & Co.10 The case below involved infringement allegations
regarding certain deep fryers manufactured by the defendant and allegedly
covered by the patent in question.11 The defense's motion for a judgment
as a matter of law on the question of inducement of infringement was de
nied, even though the record showed no direct evidence that defendant
had actual knowledge of the patent in suit prior to receiving notice of the
suit.12 On appeal of the district court's denial, the Federal Circuit affirmed,
holding that the knowledge element, required for the alleged inducer to be
liable, can be met by proof that the inducer had either actual or construc
tive knowledge of the patent.13 Constructive knowledge of the patent, the
court held, could be found through evidence that the inducer engaged in
"deliberate indifference" with respect to whether there existed a patent
that covered the product serving as a model in the development of the al
leged inducer's product.14 At the time of this writing, the Supreme Court
had granted certiorari on the question of whether the legal standard for
the state of mind element of a claim for actively inducing infringement
under 35 U.S.C. 271(b) is "deliberate indifference" to a known risk that
an infringement may occur, as the Federal Circuit held, or "purposeful,
culpable expression and conduct" to encourage an infringement, as the
Supreme Court held in MGM Studios, Inc. v. Grokster, Ltd.xi Look for more
from the Supreme Court on this topic next year.
In i4i v. Microsoft, the Federal Circuit addressed several issues, including
whether the presumption of validity with respect to an issued U.S. pat

ent requires clear and convincing evidence to support a finding of patent
invalidity, when the prior art at issue was not before the Patent Office at
the time the patent was granted.16 Plaintiff i4i sued Microsoft for infringe
ment with respect to patents covering a method for processing and stor
ing information about the structure of electronic documents, and the jury
found for plaintiff notwithstanding Microsoft's allegations that a sale of

software more than one year prior to the application for patent was invali
10. 594 F.3d 1360 (Fed. Cir. 2010), cert, granted, 131 S. Ct. 458 (2010).
11. Id. at 1365.
12. Id. at 1367.

13. Id. at 1376-77.
14. Id.
15. 545 U.S. 913, 937 (2005).

16. i4i Ltd. P'ship v. Microsoft Corp., 598 F.3d 831 (Fed. Cir. 2010).
464
Tort Trial ir Insurance Practice Law Journal, Winter 2011 (46:2)
dating prior art under 35 U.S.C. 102. The Federal Circuit affirmed the
lower court holding and reaffirmed the clear and convincing standard for
evidence of patent invalidity, even though the prior art reference was not
before the U.S. Patent Office at the time the patent was granted.17 On ap
peal to the Supreme Court, Microsoft is expected to urge that a lower evi
dentiary burden, e.g., a preponderance of the evidence, should be applied

to determine the validity of a patent in circumstances where the asserted
prior art was not considered by the U.S. Patent Office during the patent's
prosecution.
The standard to be used in ascertaining inequitable conduct by an appli
cant or its counsel during patent prosecution again raised its head before the
Federal Circuit in Therasense, Inc. v. Becton, Dickinson & Co.18 The original
Federal Circuit opinion was vacated, and as of this writing was pending en
banc review.19 The initial Federal Circuit opinion addressed, among other
things, whether a U.S. patent in suit was invalid for inequitable conduct,
arising out of failure to disclose statements made to the European Patent
Office (EPO) during a revocation proceeding of the European counterpart
to the patent in suit.20 The district court found that statements made by the
patent owner's predecessor-in-interest to the EPO were highly material to
the prosecution of the patent in suit because they contradicted representa
tions the predecessor made to the USPTO regarding a membraneless sen

sor disclosed in the patent in suit.21 In the initial opinion, which now stands
vacated, the Federal Circuit held that prior attorney arguments made in
another forum (e.g., the EPO) can be material to the question of patent
ability when those prior statements contradict later statements made to
the USPTO.22 In the coming year, the Federal Circuit's en banc opinion
may provide further guidance on whether attorney argument about prior
art made in other forums can be information material to the question of

patentability, such that patent applicants must relay to the USPTO all at
torney prior art arguments made across the globe in counterpart patent
applications to avoid possible claims of inequitable conduct.
In two different cases, the Federal Circuit shed further light on the mean
ing of the false patent marking statute and the scope of qui tam actions for
civil fines thereunder.23 First, in Forest Group, Inc. v. Bon Tool Co., the court
held that liability calculation under 35 U.S.C. 292(a), for falsely marking
17. Id. at 847-48.
18. 593 F.3d 1289 (Fed. Cir. 2010).

19. Therasense, Inc. v. Becton, Dickinson & Co., 374 F. App'x 35 (Fed. Cir. 2010).
20. Therasense, 593 F.3d at 1300.
21. Id. at 1301.
22. Id. at 1305.
23. 35 U.S.C. 292.
465
an article with indicia that the article is protected by a patent, is deter

mined on a per-article basis.24 Then, in the separate case of Pequignot v.
Solo Cup Co., the Federal Circuit confirmed that the false patent marking
statute requires a finding that the alleged false marker had a specific intent
to deceive.25 "Because the statute requires that the false marker act 'for the
purpose of deceiving the public,' a purpose of deceit, rather than simply

knowledge that a statement is false, is required."26 Thus, while a rebuttable
presumption of intent to deceive was established by the fact that (a) the
previously patented product was no longer patented at the time of the
marking in question (because the patent had expired) and (b) the marker
knew the product was no longer patented at the time of that marking, the
presumption was rebutted by sufficient evidence that the marker had acted
in good faith on advice of counsel.27 In dicta, the court noted that a finding
of liability in the case theoretically could have resulted, under the Forest
Group precedence, in a penalty of $500 per article falsely marked, and with
21,757,893,672 articles falsely marked, a grand total fine of approximately
$5.4 trillion.28 Unless Congress steps into the fray with new legislation,
look for further growth in the new cottage industry of qui tam actions for
false patent marking under 35 U.S.C. 292.

In the realm of design patent law, the Federal Circuit expanded upon its
prior holding in Egyptian Goddess,29 and held that the "ordinary observer
test" should be the sole test for design patent invalidity over cited prior
art.30 The case International Seaway Trading Corp. v. Walgreens Corp. in
volved an owner of design patents for clogs who asserted the patents against
competitor defendants, and the lower court granted summary judgment in
favor of the defendants.31 On the patent owner's appeal, the Federal Circuit
held that an "ordinary observer test" similar to that adopted in Egyptian

Goddess to design patent infringement analysis should also apply in the con
text foe design patent validity.32 The "ordinary observer test," as stated in
the design patent validity context, is a test that asks whether the patented
design and the prior art design are substantially similar in the eyes of the
ordinary observer armed with the knowledge of the prior art. The Federal
Circuit held that the test should apply, affirmed in part, vacated in part, and
24. 590 F.3d 1295, 1301 (Fed. Cir. 2009).

25. 608 F.3d 1356 (Fed. Cir. 2010), en banc rev. den. (Fed. Cir. Sept. 15, 2010).
26. Id. at 1363.
27. Id. at 1364.
28. Id. at 1359, n.l.

29. Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008) (en banc).
30. Int'l Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1240 (Fed. Cir. 2009).
31. Id. at 1236.
32. Id. at 1237-40.
466
remanded for further proceedings so that the district court could, among
other things, consider the designs' insoles under the "ordinary observer
test," rather than the "point of novelty" test, to determine whether the
design patents were anticipated and/or made obvious by the prior art.33
Finally, the Federal Circuit en banc again addressed the existence of a
written description requirement under 35 U.S.C. 112, first paragraph,
in Ariad Pharmaceuticals v. Eli Lilly}* There, owners of a patent claiming
methods comprising the single step of reducing Nuclear Factor Kappa B
(NF-kB) activity in eukaryotic cells brought infringement action against a
competitor.35 The lower court denied a motion by the defense for a judg
ment as a matter of law, after the jury found the patent survived challenges
based upon, inter alia, lack of an adequate written description.36 On ap

peal, the Federal Circuit en banc reversed in part, holding that there is a
separate written description requirement under the statute, and the pat
ent claims asserted were invalid for failing to provide an adequate written
description.37 The court held that the patent applicant failed to provide
adequate written description of the claims by hypothesizing three classes of
molecules potentially capable of reducing NF-kB activity, where the patent
disclosed no working or even prophetic examples of the molecules proph
esized to be capable of reducing NF-kB activity.38 For now, the written
description requirement under 35 U.S.C. 112, first paragraph, remains
an additional and separate requirement from the enablement requirement
under the same statute.
III. TRADEMARKS
Trademark cases from the past year continue to show that the present and
future of trademark law exist on the Internet.
In Rosetta Stone Ltd. v. Google Inc., a federal district court held that
Google's Adwords program did not infringe Rosetta Stone's trademarks.39
Rosetta Stone provides language learning products.40 Google operates an

Internet search engine and derives revenue from selling targeted advertis
ing.41 When users conduct searches on Google, search results are returned
33. Id. at 1244.
34. Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336 (Fed. Cir. 2010) (en banc).
35. Id. at 1340.

36. Id.
37. Id.
38. Id. at 1355-57.
39. No. 09-00736, 2010 WL 3063152 (E.D. Va. Aug. 3, 2010).
40. Id. at *2.

41. Id.
467
along with sponsored links.42 Adwords allows an advertiser to select cer

tain search terms that will result in that advertiser's sponsored link appear
ing alongside related search results.43 Some of the search terms Google
sells may include trademarks.44 Thus, an advertiser unrelated to Rosetta
Stone can pay for the advertiser's sponsored links to appear in response to
a search using Rosetta Stone's trademarks.45 For example, a search for "Ro
setta Stone" might yield a sponsored link to a website selling Rosetta Stone
software even though the site is unaffiliated with Rosetta Stone.
Rosetta Stone claimed that by giving unrelated advertisers the right to
appear as sponsored links in response to searches using Rosetta Stone's

trademarks, Google infringed on Rosetta Stone's trademarks.4*5
On the issue of direct trademark infringement, the court found "no rea
sonable trier of fact could find that Google's practice of auctioning Rosetta
Stone's trademarks as keyword triggers to third party advertisers creates
a likelihood of confusion as to the source or origin of Rosetta Stone's

products."47 Google was not trying to pass off its goods or services as Ro
setta Stone's:48
Google's popular search engine aggregates information and provides ad
vertising space. This is akin to a newspaper or magazine selling advertising
space. ... It does not, however, sell Google-made products on its web
site. . . . Any argument that Google is trying to palm off its goods as those of
Rosetta Stone's is, therefore, unfounded.49
The court found it significant that "Rosetta Stone and Google are not
direct competitors in the language-learning software market."50 And "none
of the Rosetta Stone witnesses were confused about the source of their
purchase but only as to whether what they purchased was genuine or coun
terfeit. They were not confused by the Sponsored Links, but by the con
fusing nature of the websites from which they purchased."51
The court also found there was no contributory infringement because

"no reasonable trier of fact could find that Google intentionally induces
or knowingly continues to permit third party advertisers selling Rosetta
Stone products to use the Rosetta Stone Marks."52 The court took note
42. Mat*3.
43. Id.
44. Id. at *3-4.
45. Id.
46. Id. at *5.
47. W. at *6.
48. Id. at *7.

49. Id.
50. Id. at *9.
51. li. at *10.

52. Id. at *13.
468
Tort Trial ir Insurance Practice Law Journal, Whiter 2011 (46:2)
of Google's trademark task force, used to remove counterfeiters' links.53

Similarly, because Google had no agency relationship with the advertisers,
it could not be a vicarious infringer.54
Finally, as to trademark dilution, the court found that because Google did
not sell language learning software, it could not dilute Rosetta Stone's trade
marks. In fact, Google increased Rosetta Stone's brand awareness among

the public.55 Rosetta Stone's grievances were better targeted at the sellers of
infringing products rather than Google as a seller of advertising space.
In Visa International Service Association v. jfSL Corp., the Visa credit card
company sued the operator of eVisa.com for trademark infringement.56

eVisa operated a website offering English language tutoring.57 The name
e Visa was purportedly derived from the Japanese word for English con
versation, which begins with "e," and a metaphorical visa facilitating travel
through the English-speaking world.58
While the court ultimately enjoined eVisa from using that name because
appending "e" to a mark was "effectively identical" to the mark, the court's
evidentiary holding was remarkable.59 eVisa objected to Visa's market sur
veys and expert testimony showing dilution.60 The court avoided the issue
by holding, "a plaintiff seeking to establish a likelihood of dilution is not
required to go to the expense of producing expert testimony or market

surveys; it may rely entirely on the characteristics of the marks at issue."61
The court's observation is startling because, in practice, surveys and ex

pert testimony showing dilution or confusion are de rigueur. But here,
the court holds that no such evidence is necessary, and the fact finder can
simply decide by comparing the marks and nothing else. In other words, as
little as a survey of one (i.e., the fact finder) is necessary as some evidence
of dilution.
Mattel, Inc. v. MGA Entertainment, Inc. is the widely covered Bratz case.62
MGA, a toymaker, hired Mattel's employee, Carter Bryant.63 While at Mat
tel, Bryant conceived of a new line of dolls. Unlike Mattel's Barbie dolls,
Bryant's doll concept was intended to capture a trendy attitude.64 While at
53. Id. at *14.

54. Id. at *15.
55. Id. at *16.
56. 610 F.3d 1088 (9th Cir. 2010).
57. Id. at 1089.

58. Id.
59. Id. at 1090.
60. Id. at 1091.
61. Id.
62. 616 F.3d 904 (9th Cir. 2010).
63. Id. at 907.

64. Id.
469
Mattel, Bryant generated sketches of four dolls and a crude sample, which
he pitched to MGA while still in Mattel's employ.65
MGA hired Bryant and began marketing dolls implementing Bryant's

concepts. Called Bratz, these trendy dolls were a huge hit and cut into the
more staid Barbie's sales.66 Mattel was even more alarmed when it learned
that its former employee was behind Bratz.67
While at Mattel, Bryant had an employment agreement by which he

assigned to Mattel all his "right, title and interest in such inventions, and
all [his] right, title and interest in any patents, copyrights, patent ap
plications or copyright applications based thereon."68 "Inventions" in
cludes "all discoveries, improvements, processes, developments, designs,
know-how, data computer programs and formulae, whether patentable or
unpatentable."69
At trial, Mattel argued Bryant violated his employment agreement by

presenting his idea to MGA instead of Mattel.70 It also argued Mattel
owned Bryant's sketches and mock-up.71 And Mattel argued MGA wrong
fully acquired the ideas for the names "Bratz" and "Jade" such that the
trademarks should be transferred to Mattel.72 The trial court agreed with
Mattel on all points and enjoined MGA's activity with any Bratz product,
including those based on Carter's original four designs, and extending to
those created after Bryant left Mattel.73
On appeal, the Ninth Circuit questioned whether Bryant's ideas were

covered by the employment agreement.74 Finding room to disagree on that
issue, the court held the contract ambiguous and remanded for evidence
resolving the ambiguity.75 The court also disagreed with the trial court's
broad injunction against marketing all Bratz products.76 While employed
by Mattel and under his employment agreement, Bryant only conceived of
the first four Bratz dolls.77 But the court enjoined MGA from marketing
all Bratz products, including those created after Bryant left Mattel.78 The
65. Id. at 907-08.

66. Id. at 907.
67. Id.
68. Id. at 909 (emphasis in original).
69. Id.
70. Id. at 908.

71. Id.
72. Id.
73. Id.
74. Id. at 909-10.

75. Id.
76. Id. at 910.

77. . at 907.
78. Id. at 910.
470
Ton Trial ir Insurance Practice Law Journal, Winter 2011 (46:2)
court found that forcing MGA to turn over the fruits of its sweat equity,
and the related trademarks, was inequitable.79
The court's opinion also covered copyright matters as well. Significantly,
it held that the trial court did not do enough analysis in distinguishing
between the nonprotectable ideas and the protectable expressions of those
ideas.80 In finding copyright infringement by substantial similarity, the
trial court erred by not determining whether the substantial similarities
existed in the expressions, or whether merely the ideas were substantially
similar.81
In Advertise.com, Inc. v. AOL Advertising, Inc., AOL sued Advertise.com

for infringing on its advertising.com trademark.82 AOL owned the trade
mark "advertising.com."83 Finding Advertise.com confusingly similar to
AOL's trademark, the trial court preliminarily enjoined Advertise.com
from using the Advertise.com trade name but allowed it to use the adver
tise.com web address.84
On appeal, the issue was whether AOL's mark was generic and thus not
protectable.85 The court used its "who-are-you/what-are-you" test.86 "A
mark answers the buyer's questions 'Who are you?' 'Where do you come
from?' ' Who vouches for you?' But the [generic] name of the product
answers the question 'What are you?'"87 The court found that "[w]hen
any online advertising company, including AOL's competitors, is asked the
question 'what are you?'" the answer could appropriately be "an adver
tising dot-com."88 And the court recalled numerous cases and Trademark
Trial and Appeal Board decisions holding the addition of ".com" to a mark
generally does not strengthen it.89
IV. COPYRIGHTS
Copyright law is an area of intellectual property law that perhaps is more

challenged by changes in technology and society than any other. The entire
notion of what should be protected by copyright is potentially undergoing
a sea change. Cases during the last year reflect these changing technologi
cal and cultural standards.
79. Id. at 910-11.

80. Id. at 916.
81. Id.
82. 616 F.3d 974, 976 (9th Cir. 2010).
83. Id.
84. Id.
85. Id.
86. Id. at 978.

87. Id.
88. Id.
89. Id. at 978-79.
471
In Christen v. Iparadigms, LLC, a graduate student brought state law

claims against Iparadigms.90 Christen was a graduate student of the Uni
versity of Central Florida."1 She had prepared papers during her studies.92
The University of Central Florida, like many universities, used Ipara

digms' Turnitin technology system to evaluate whether or not works writ
ten by students were originals or plagiarized.93 Turnitin compares student
work submitted by universities or students themselves to Internet content,
student works previously submitted, and commercial databases of journal

articles and periodicals.94
Christen's suit claimed that two of her papers were uploaded to the
Turnitin system by her instructor without her consent.95 She further as
serted that this action unlawfully detained her papers and constituted a
claim for replevin, conversion, and unjust enrichment.96 Iparadigms filed
a motion to dismiss based on the argument that such state court claims
are completely preempted by federal copyright law, 17 U.S.C. 301(a).97
The court noted that preemption is subject to a two-part test that seeks to
determine whether the work is within the scope of the subject matter of
copyright as specified in 17 U.S.C. 102 and 103 and whether the rights
granted under state law are equivalent to any exclusive rights within the
scope of the federal copyright statute.98 The court recognized that the issue
becomes whether or not the state court claims are "qualitatively different"
from those protected by the copyright statute.99
The court noted that Christen was seeking damages from Iparadigms'
reproduction of the work and not the actual return of the original manu
script.100 The court stated that Christen's real claim is to intellectual prop
erty, which she claims has been misappropriated.101 Therefore, diversion
claim relief sounds in copyright.10' The court, therefore, found that all of
her state court claims, including unjust enrichment, were fully preempted
and dismissed the case.103
90. No. 10-620, 2010 WL 3063137 (E.D. Va. Aug. 4, 2010).
91. Id. at *1.

92. Id.
93. Id.
94. Id.
95. Id.
96. Id.
97. M.
98. Id.
99. Id. at *2.
100. Id. at *2-3.
101. Mat*3.
102. Id.
103. Id. at *4.
472
Another example of modern technology providing the factual backdrop

for copyright lawsuits is found in Cvent, Inc. v. Eventbrite, Inc.m The plain
tiff, Cvent, sued Eventbrite alleging that Eventbrite "scraped" information
from Cvent's website, reformatted it, and then posted it as its own on its
website.105 Claims were made under the Computer Fraud and Abuse Act,
the Virginia Computer Crimes Act, and the Lanham Act, and also included
state causes of action for breach of contract, unjust enrichment, business
conspiracy, and common law conspiracy.106 Cvent also sued for copyright
infringement and the Lanham Act, alleging reversed passing off.107 Cvent
sought a permanent injunction and damages.108 Eventbrite filed a motion
to dismiss all claims, except for the copyright infringement claim, alleging
that the claims were either barred or preempted.109
The court, following analysis similar in some respects to Iparadigms,

analyzed each of the claims against which the motion to dismiss had been
lodged.110 The court held that the unauthorized scraping of the informa
tion from the website was not hacking under the Computer Fraud and
Abuse Act, since the site was not password-protected.111 The court also
held that the Virginia computer statute claim was preempted by the Copy
right Act, in much the same way as in Iparadigms.112 The court analyzed the
remaining claims to determine whether plaintiff properly stated a claim.113

The state claim for breach of contract was not preempted by the Copyright
Act since the court found that the elements for that claim differed from the
Copyright Act.114
But the breach of contract claim in Cvent was held by the court to be
different from the copyright violation in that the contract claim depended
upon violation of the terms of use agreement at Cvent's website.115 The

court then found that there was no contract established between Cvent
and Eventbrite as a result of Eventbrite's going to the Cvent website be

cause Eventbrite had not consented to the browsewrap agreement at the
website.116 The remaining state causes of action were dismissed for failure
104. No. 10-CV-00481, 2010 WL 3732183 (E.D. Va. Sept. 15, 2010).
105. M.at*l.
106. Id. at *2.

107. Id.
108. Id.
109. Id.
110. Id. at *3-11.
111. Id. at *3-4.
112. Id. at *5-6.
113. Id. at *6-11.
114. Id. at *7.
115. Id. at *7-8.
116. Id. at *8.
473
to state a claim of relief, with the exception of the unjust enrichment claim,
since it presented a question of fact not properly decidable in a motion to
dismiss.117
The U.S. Supreme Court resolved an issue that the circuit courts had
taken up a number of times over the years. In Reed Elsevier, Inc. v. Much
nick, freelance authors brought suit against publishers in a class action that
was certified in the Southern District of New York.118 The class included
authors who had registered their copyrighted works and authors who had
not.119 The complaint of the freelance authors was that publishers were re
producing their copyrighted works and, even though they were authorized
to produce them in a physical format, they were also reproducing them dig
itally. The parties had negotiated towards a settlement for approximately
three years.120 The settlement was eventually agreed to and submitted to
the court and the court certified the class and approved the settlement.121
The plaintiffs in this case objected to the settlement and appealed.122
Shortly before oral argument, the Second Circuit sua sponte ordered the
parties to brief the question of whether 411(a) of the Copyright Act de
prived the court of subject matter jurisdiction since some of the authors had
not registered their works.123 None of the parties at any time had moved to
dismiss on this basis and all parties argued to the Second Circuit that the
court retained jurisdiction.124 Nonetheless, the court dismissed the lawsuit
holding the lack of registration of some of the plaintiffs deprived the court
of subject matter jurisdiction.125
No party agreed with the Second Circuit opinion, so the Supreme Court
appointed amicus curiae to defend the court of appeal's opinion.126 The Su
preme Court looked at the history of this issue in the courts of appeal and
found that the decisions rested on the distinction between jurisdictional

conditions and claim processing rules.127 The court recognized the distinc
tion between the two can be "confusing in practice."128
The Court noted that when Congress does not rank a statutory limita
tion on coverage as jurisdictional, the Court should treat "the restriction
117. Id. at *9-11.
118. 130 S. Ct. 1237(2010).
119. Id. at 1242.

120. Id.
121. Id.
122. Id.
123. Id.
124. M.
125. Id. at 1243.
126. Id.
127. Id. at 1243-44.
128. Id. at 1243.
474
Toi~t Trial ir Insurance Practice Law Journal, Whiter 2011 (46:2)
as non-jurisdictional in character."129 The Court here held that, in fact,

Congress had not ranked the requirement of registration as jurisdiction
al.130 The Court analogized the current case to the situation under 1331
of Title XII, where one would refrain from construing the numerosity re
quirement as jurisdictional. The Court stated that the registration require
ment of 411(a) imposes a precondition to filing a claim, but that it is not
labeled jurisdictional, it is not located in the provision dealing with juris

diction, and there are congressionally authorized exceptions that would
allow suit to be brought without registration.
The Court stated that a number of decisions including Bowles v. Russell,131
might seem to call for a different conclusion.132 However, the court distin
guished Bowles and found 41 l(a)'s requirements to be nonjurisdictional.133
The court, therefore, reversed the court of appeal's decision.134
The issue of functionality is one that often arises in copyright cases that
deal with design elements. In Universal Furniture International, Inc. v. Col
lezione Europa USA, Inc., the court was called upon to make such a deter
mination.135 Universal Furniture International, Inc. (UFI) was the owner
of a copyright for furniture design and brought suit against its competitor,
Collezione, for infringement.136 UFI also brought suit under the Lanham
Act and the North Carolina Unfair and Deceptive Trade Practices Act.137
UFI was awarded a judgment of $11 million after a bench trial on liability
and a separate hearing on damages.138
Collezione raised numerous defenses available to it.139 The defendant
emphasized the idea that the design element used in UFI's furniture, which
Collezione copied, was not original.140 Specifically, Collezione argued that

the designs were mere reproductions of design elements in historical pieces
of furniture.141 However, UFI was able to convince the court that their de
signer did not simply copy earlier designs; rather, he used his own aesthetic
sense to modify and combine prior decorative elements into a new whole
that satisfied the Copyright Act's requirement of originality. The court
129. Id. at 1244 (quoting Arbaugh v. Y&H Corp., 546 U.S. 500, 515-16 (2006)).
130. Id. at 1245.
131. 551 U.S. 500(2006).
132. Reed Elsevier, 130 S. Ct. at 1247.

133. Id. at 1247-48.
134. Id. at 1249.
135. 618 F.3d 417 (4th Cir. 2010).
136. Id. at 424.

137. Id.
138. Id.
139. Id. at 428.

140. Id. at 429-30.
141. Id. at 430.
475
carefully noted that its decision was based upon these decorative elements
and not the underlying design of the furniture itself.142
Collezione also attacked UFI's claim on the basis that the decorative de
signs claimed were not separable from the underlying utilitarian function
of the furniture. The court stated that "[cjourts have twisted themselves
in knots trying to create a test to effectively ascertain whether the artistic
aspects of a useful article can be identified separately from and exist inde
pendently of the article's utilitarian function."143
The court reviewed a number of cases analyzing this subject and cited
Pivot Point International, Inc. v. Charlene Products:
Conceptual severability exists . . . when the artistic aspects of an article can
be conceptualized as existing independently of their utilitarian function. This
independence is necessarily informed by whether the design elements can be
identified as reflecting the designer's artistic judgment exercised indepen

dently of functional influences. If the elements do reflect the independent,
artistic judgment of the designer, conceptual separability exists. Conversely,
when the design of a useful article is as much the result of utilitarian pres
sures as aesthetic choices, the useful and aesthetic choices are not conceptu
ally separable.144
The court found that the designs by UFI consisted of "highly ornate
collections," which contained all sorts of decorative elements and other
carvings.145 They were described by their designer as "an ornamentation
explosion."146 The court found that these decorations were unnecessary to
the performance of the utilitarian function of the furniture and, therefore,
were protected under copyright law and were not subject to the defense of
functionality.147
The court also examined Collezione's argument that its designs were
not similar enough to the UFI designs to infringe.148 However, the court
found that under both the extrinsic and intrinsic inquiries required by this
analysis the designs were similar.149 The court relied heavily upon the tes
timony of UFI's expert and said that such expert testimony is quite often
the key to meeting the extrinsic inquiry portion of the test.150 The court
142. Id. at 430-31.
143. Id. at 431 (quoting Masquerade Novelty, Inc. v. Unique Indus., Inc., 912 F.2d 663,
670 (3d Cir. 1990)).
144. Id. at 432-33 (quoting Pivot Point Int'l, Inc. v. Charlene Prods., 372 F.3d 913, 931
(7th Cir. 2004)).
145. Id. at 434.
146. Id.
147. Id.
148. Id. at 43 5.
149. Id. at 436-37.
150. Id.
476
concluded that Collezione's collection shared the "aesthetic harmony" of

UFI's designs.151
The court also found that Collezione's presentation of UFI furniture

pieces at a trade show where Collezione claimed those pieces as its own was
a reverse passing off under the Lanham Act and also subjected Collezione
to damages.152
Finally, the court looked at the damages claims of UFI and affirmed a
judgment of $11 million.153 Collezione had argued that the court had not
allowed it offsets for various expenses and other deductions.154 The court
noted that the court could allow for such deductions, but that Collezione
had wholly failed to make appropriate proof and it was its burden to do
so.155 Collezione, in fact, did not provide such evidence in discovery until
right before trial and even after trial continued to provide inadequate and
unverified information that the court found wholly inadequate to meet its
burden in the case.156
Copyright issues can involve very fine judgments of aesthetics, as seen
in the Universal Furniture case. Some of the same concepts of copyright

law, however, are also used by courts to make decisions on the cutting edge
of technology and the Internet. At this point, courts seem to be dealing

with cases on a case-by-case basis, rather than setting out grand themes or
trends in copyright law.
V. INSURANCE
Two recent decisions show that coverage may be obtained under a compre
hensive general liability (CGL) policy for certain types of patent infringe
ment, but that such circumstances remain very narrow. In Hyundai Motor
America v. National Union Fire Insurance Co. of Pittsburgh,157 the U.S. Court
of Appeals for the Ninth Circuit found that a patent claim constituted "ad
vertising injury" and thereby required the insurer to provide a defense to
patent infringement claims under the insured's CGL policy. In doing so,
the Ninth Circuit distinguished both its own and California precedent,
which appeared to draw a categorical line against CGL coverage for direct
or indirect patent infringement claims.
The governing California rule was set out in Mez Industries, Inc. v. Pa
cific National Insurance Co.,158 in which a California intermediate appellate
151. Id. at 436 (internal quotation omitted).

152. Id. at 438-39.
153. Id. at 440-41.
154. Id.
155. Id.
156. Id.
157. 600 F.3d 1092 (9th Cir. 2010).

158. 90 Cai. Rptr. 2d 721 (Cai. Ct. App. 1999).
477
court concluded that neither direct patent infringement nor inducement

to patent infringement was covered as "advertising injury" under a CGL
policy.159 The insured, Mez Industries, manufactured components used to
connect joints in airflow conduction systems (such as central heating) and
advertised such components for sale through wholesalers to sheet metal
and mechanical contractors, who used the components to create duct sys
tems in building projects throughout the United States.160 According to
the court, direct patent infringement "occurs when a party makes, uses or
sells a product incorporating a patented invention," and the court clarified
that
[wjhere the claim in the underlying action is that an insured directly infringed
the patents of another by the sale of its products, rather than by the form of the
insured's advertisements, then the patent infringing act did not occur in the
course of the insured's advertising activities within the meaning of the relevant
policy language.161
With respect to inducement, the court acknowledged that "[u]nlike direct

infringement, it is possible for inducement to infringe to occur during the
course of advertising activities" and that "advertising has been found to be
a sufficient basis for a claim of inducement," but concluded that "liability
can only be found if the inducement is 'active'; that is, a party must pur
posefully cause, urge or encourage another to infringe" and "[sjomething

more is required than simply the advertising of a product for sale.'"62
The Ninth Circuit applied this reasoning in Homedics, Inc. v. Valley Forge
Insurance Co.163 The insured, Homedics, was accused of having "directly

infringed, contributorily infringed and induced others to infringe [a] pat
ent in a certain therapeutic magnetic device, apparently used in alterna

tive medical procedures."164 The patent holder claimed that the insured
had "directly infringed its patent by offering to sell infringing products
through advertising," under the rule that an offer to sell a patented product
is itself infringement.165 The Ninth Circuit ruled that Homedics was not
entitled to a defense under the advertising injury provisions of Homedics'
CGL policy because "the underlying Nikken actions at issue here do not
allege violation of a method patent involving advertising ideas or a style of
doing business.'"66 The Ninth Circuit adopted the California court's rea
soning in Mez Industries that "the misappropriation language [in the CGL
159. Id. at 727-36.
160. Id. at 724.
161. Id. at 727-28 (emphasis in original).

162. Id. at 728 (emphasis in original; internal quotation omitted).
163. 315 F.3d 1135 (9th Cir. 2003).
164. Id. at 1137.
165. Id. at 1137 and n.l.

166. Id. at 1141.
478
policy ] could not be reasonably read by a layperson to include either patent

infringement or the inducement thereof.'"67
The facts in Hyundai Motor America presented an exception to this rule,
which was hinted at by the Ninth Circuit in Homedics. One of the two
patents at issue addressed a "method of generating customized product
proposals for potential customers of an automobile dealer."168 According to
the summary of the invention, the patent covered "[a]n electronic system
for creating customized product proposals [that] stores a plurality of pic

tures and text segments to be used as building blocks in creating the pro
posal." The system would query a user "to determine a customer's needs
and interests," and then "select|] the appropriate picture and text building
blocks to fill in proposal templates."169 Based upon the customer's answers,
the patented system "links product pictures, environment pictures, and
textual descriptions together in a customized proposal.'"70
Hyundai maintained a website that contained a "'build your own ve
hicle ('BYO')' feature," which "allowed users to navigate through a series
of questions on a menu (to select, for example, colors, engine and trans
mission types, and options)."171 This BYO feature "displayed customized
vehicle images and pricing information" in response to the users' respons
es.172 The patent holder, Orion IP, LLC, filed an infringement suit against
Hyundai and a large number of other manufacturers, and Hyundai sought
indemnity and a defense from its CGL insurer, National Union.173 Ul
timately, after National Union disclaimed any duty to defend Hyundai,
Hyundai brought a declaratory action against National Union, and sought
a ruling that the infringement claim directed to Hyundai's BYO website
constituted covered "advertising injury" under the CGL policy.174
Under California law, "[t]he carrier must defend a suit which poten
tially seeks damages within the coverage of the policy," and "[a]ny doubt
as to whether the facts give rise to a duty to defend is resolved in the in
sured's favor.'"75 To show that a claim is potentially covered as "advertising
167. Id. (internal quotation omitted, emphasis in original) (citing Mez Indus., 76 Cai. App.
4th at 871-72).
168. Hyundai Motor Am. v. Nat'l Union Fire Ins. Co. of Pittsburgh, 600 F.3d 1092, 1095
(9th Cir. 2010).
169. Id. at 1095-96.
170. Id. at 1096.
171. Id. at 1095.

172. Id.
173. Id. at 1096.
174. Id. at 1096-97.
175. Id. at 1097 (emphasis omitted) (quoting Hameid v. Nat'l Fire Ins. of Hartford, 71 P.3d
761, 764 (Cai. 2003), and Lebas Fashion Imps, of USA Inc. v. ITT Hartford Ins. Grp., 59
Cai. Rptr. 2d 36, 40 (Cai. Ct. App. 1996)).
479
injury," the California Supreme Court has specified three elements that
must be established.176 In order for the insured to have a "reasonable ex
pectation of coverage" for advertising injury, the insured must show that
(1) he or she "was engaged in 'advertising' during the policy period when
the alleged 'advertising injury' occurred"; (2) the allegations "created a po
tential for liability under one of the covered offenses" in the "advertising
injury" section of the policy, such as misappropriation of advertising ideas;
and (3) "a causal connection existed between the alleged injury and the
'advertising.'"177
The Ninth Circuit first concluded that the BYO system was "adver
tising." "The term 'advertising' means 'widespread promotional activities
usually directed to the public at large,' but it does not encompass 'solicita
tion.' "178 The insurer contended that the BYO website was not advertising;
it was effectively a form of one-on-one solicitation because it "create[d]

customized proposals specific to an individual user."179 The court rejected
this argument, finding that the BYO website was described in the com
plaint as "marketing methods" or "marketing systems," which would "fit[j
squarely within the definition of 'advertising.'"180 In addition, while the

BYO feature "has some similarities to solicitation" because it "does litde,
if anything, until the user inputs some personal preferences," the BYO
feature could not be considered a one-on-one solicitation because it was
not limited to a discrete customer or customers but was made available to
the public at large.181 In other words, because anyone with access to the
website could use the feature, it was not a direct solicitation but was instead
"advertising."182
The Ninth Circuit then determined that the patent infringement claim
constituted an alleged "misappropriation of advertising ideas," which was

defined as one form of "advertising injury" coverage in the CGL policy.183
The court applied the standards articulated in Mez Industries,184 in which
the court concluded that the determination of whether a claim falls within
a particular type of coverage must be based upon a "contextual reasonable
ness" analysis.185 Thus, according to the Ninth Circuit, "[w]e must deter
176. See Hameid, 71 P.3d at 764-65.

177. Hyundai Motor Am., 600 F.3d at 1098 (quoting Hameid, 71 P.3d at 764-65).
179. Id.
180. Id.
181. Id. at 1099-1100.

182. See id.
183. Id. at 1100.
184. Mez Indus., Inc. v. Pac. Nat'l Ins. Co., 90 Cai. Rptr. 2d 721, 733 (Cai. Ct. App.
1999).
185. Hyundai Motor Am., 600 F.3d at 1100.
480
Tort Trial & Insurance Practice Law Journal, Winter 2011 (46:2)
mine, in the context of the case and in light of common sense, whether a
lay person reasonably would read the phrase 'misappropriation of adver

tising ideas' to include the patent infringement claim at issue," and "[m]
ore precisely, the proper test is whether the patents at issue 'involve any
process or invention which could reasonably be considered an "advertising
idea."'"186 The court found that the claims in this case were for "misap
propriation of advertising ideas" because the patent involved "a method of
displaying information to the public at large for the purpose of facilitating
sales," and that the patented invention therefore could reasonably be con
sidered an "advertising idea."187
Finally, the court also found a causal link between the advertisement
and the alleged advertising injury. "As is the case with the previous ele
ment, courts have found no causal connection when the patents that the
insured allegedly infringed concerned the underlying product for sale."188
Here, however, the advertisement itself constituted use of the infringing
invention
[T]he use of the BYO feature in the website is itself an infringement of the
patent because it is the use of the BYO feature that violates the patent (and
not the design of the car, for instance, the method of manufacturing the car,
or the car's engine, or anything related to the car for sale).189
Having met each of the three elements required by California law, the
Ninth Circuit found that Hyundai was entitled to a defense with respect to
the patent infringement claim.190
Another recent case, however, shows how narrow the exception in Hyun
dai Motor America may be. In DISH Network Corp. v. Arch Specialty Insur
ance Co.,191 the holder of an "interactive call processing" patent portfolio
fded suit against DISH Network, claiming that DISH's customer service
telephone system infringed a number of those patents, including one that
claimed "[a] telephone interface system . . . wherein said selective oper

ating format involves advertising a product for sale."192 DISH sought a
defense under its CGL policies, claiming that the infringement claims
alleged "advertising injury" and eventually brought a declaratory action
against its insurer.193
186. Id. (quoting Mez Indus., 90 Cai. Rptr. 2d at 733).

187. Id. at 1100-01.
188. Id. at 1102.
190. Id. at 1104.
191. No. l:09-cv-00447-JLK-MEH, 2010WL 3310025 (D.Colo. Aug. 19,2010).
192. Id. at *1-2.

193. Id. at *2.
481
"Under four of the five CGL policies at issue, DISH [was] entitled to
coverage for an 'advertising injury' only if the 'advertising injury' [was]
caused by an 'occurrence,' " which was defined in the policies as "an of
fense committed in the course of advertising your goods, products and
services that results in 'advertising injury.' "194 An "advertising injury" was
defined to include (1) publication of material that constituted slander,

libel, or "disparage [ment of] a person's or organization's goods, products
or services"; (2) "publication of material that violatefd] a person's right of
privacy"; (3) "misappropriation of advertising ideas or style of doing busi
ness; or" (4) "infringement of copyright, title, or slogan.'"95 To determine
whether DISH was entitled to a defense under these terms, the Colorado
court applied the same three elements required by the Ninth Circuit in
Hyundai Motor America-.
DISH must prove three elements to establish a duty to defend for "advertising
injury": (1) it was engaged in "advertising" during the policy period when the
alleged "advertising injury" occurred; (2) [the complaint's] allegations created
a potential for liability under one of the covered offenses (i.e., misappropria
tion of advertising ideas); and (3) a causal connection existed between the al
leged injury and the advertising.196
The court concluded that the first element was met because DISH's
customer service activities were "advertising."197 The complaint alleged

that the infringement arose from DISH's use of "automated telephone
systems . . . that allow their customers to perform pay-per-view ordering
and customer service functions over the telephone."198 The court found
that "it is unclear whether these activities constitute 'advertising,' " because
"[a] telephone conversation is, with very limited exception, a two-party

interaction," and "any offers to sell . . . are directed only to the caller on
the other end of the line."199 However, citing Hyundai Motor America, the
court noted that "[o]ther courts have . .. found there to be 'advertising' in
somewhat analogous situations."200
The court, however, found that DISH could not meet the second part
of this three-part test. The second element was not met because the claims
against DISH did not fall within any of the four types of "advertising
injury." The court found that the claims against DISH did not consti
tute "misappropriation of an advertising idea" because "the patents-in
194. Id. at *5.

195. Id.
196. Id.
197. Id. at *5-6.
198. Id. at *6.
199. Id.
200. Id.
482
Tort Trial ir Insurance Practice Law Journal, Whiter 2011 (46:2)
suit. . . concern technologies relating to interactive call processing," and

the complaint "focuses on DISH's use of these patented technologies as a
means of conveying content to and tailoring its interactions with its cus
tomers" but "does not allege that the patented technologies themselves are
incorporated as an element of DISH's communications."201 The court also

rejected DISH's effort to define the claims against DISH as a "misappro
priation of style of doing business" because "DISH did not misappropriate
the manner in which Katz conducts its business, but rather the technolo
gies themselves."202 Because the second element in the three-part test was
not met, and there was no covered injury, the court did not need to address
whether there was a causal connection between the alleged injury and the
alleged advertising.203
These two cases together present a narrow exception to the general rule
that patent infringement does not constitute "advertising injury." As a gen
eral background rule, even if the alleged infringing act is to offer a patented
invention for sale, the alleged infringement is not covered. Hyundai Motor
America identified an isolated exception that applied because the patented
invention itself was the advertising. DISH Network reaffirmed the narrow
ness of this exception by finding that alleged infringement was not "adver
tising injury" even when the infringing invention was the means by which
the advertising was conveyed to the consumer.
VI. CONCLUSION
In this turbulent and fascinating time for technology and society, intellec
tual property law is equally turbulent and fascinating. Courts continue to
adapt the body of intellectual property lawsome drafted decades agoto
a world where intellectual property owners, infringers, and users act at an
exponentially increasing speed and scale.
201. Id. at *8-9.

202. Id. at *9.
203. Id. at *10.

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RECENT DEVELOPMENTS IN INTELLECTUAL PROPERTY LAW

RECENT DEVELOPMENTS IN INTELLECTUAL

Joel W. Mohrman, R. Andrew Patty II, Randolph

The rapid changes in technology and society, coupled with ever-increasing

value of intellectual property to businesses, has caused courts to respond

of appeal have continued to issue opinions attempting to keep the estab

In a continuing trend, the U.S. Supreme Court appears to be setting the

standard applicable in determining whether a process is patent-eligible

Kennedy wrote in the majority opinion that the prior "machine-or-trans

claimed process at issue was directed to an abstract idea.8 As an abstract

patenting under 35 U.S.C. 101.9

an abstract idea ineligible to be patented, the Court avoided pronounce

chine-or-transformation test" but are nevertheless patent-eligible under

or a single standard for patent eligibility of claimed processes under 35

1. 130 S. Ct. 3218 (2010).

6. Bilski, 130 S. Ct. at 3226.

Intellectual Property Law

determine how one might identify or claim a patent-eligible process that is

The proof required to sustain a finding of inducement of patent in

whether the presumption of validity with respect to an issued U.S. pat

found for plaintiff notwithstanding Microsoft's allegations that a sale of

11. Id. at 1365.

12. Id. at 1367.

15. 545 U.S. 913, 937 (2005).

Tort Trial ir Insurance Practice Law Journal, Winter 2011 (46:2)

dentiary burden, e.g., a preponderance of the evidence, should be applied

tions the predecessor made to the USPTO regarding a membraneless sen

art made in other forums can be information material to the question of

17. Id. at 847-48.

18. 593 F.3d 1289 (Fed. Cir. 2010).

21. Id. at 1301.

22. Id. at 1305.

23. 35 U.S.C. 292.

Intellectual Property Law

an article with indicia that the article is protected by a patent, is deter

purpose of deceiving the public,' a purpose of deceit, rather than simply

false patent marking under 35 U.S.C. 292.

held that an "ordinary observer test" similar to that adopted in Egyptian

24. 590 F.3d 1295, 1301 (Fed. Cir. 2009).

28. Id. at 1359, n.l.

32. Id. at 1237-40.

Tort Trial ir Insurance Practice Law Journal, Winter 2011 (46:2)

based upon, inter alia, lack of an adequate written description.36 On ap

under the same statute.

Rosetta Stone provides language learning products.40 Google operates an

33. Id. at 1244.

35. Id. at 1340.

38. Id. at 1355-57.

39. No. 09-00736, 2010 WL 3063152 (E.D. Va. Aug. 3, 2010).

40. Id. at *2.

Intellectual Property Law

along with sponsored links.42 Adwords allows an advertiser to select cer

appear as sponsored links in response to searches using Rosetta Stone's

a likelihood of confusion as to the source or origin of Rosetta Stone's

The court also found there was no contributory infringement because

48. Id. at *7.

50. Id. at *9.

51. li. at *10.

Tort Trial ir Insurance Practice Law Journal, Whiter 2011 (46:2)

of Google's trademark task force, used to remove counterfeiters' links.53

marks. In fact, Google increased Rosetta Stone's brand awareness among

company sued the operator of eVisa.com for trademark infringement.56

required to go to the expense of producing expert testimony or market

The court's observation is startling because, in practice, surveys and ex