Representative Trademark Cases and Matters
- Bluetooth SIG, Inc. — We handle the worldwide trademark portfolio for the Bluetooth SIG (the "SIG"), the source of the popular BLUETOOTH wireless technology incorporated in thousands of consumer products offered and sold throughout the United States and abroad. Our work for the SIG includes counseling, clearance, prosecution, policing and enforcement, and we are currently responsible for over 440 applications and registrations for Bluetooth trademarks around the world. Of note, we successfully obtained registrations for the BLUETOOTH word mark in several jurisdictions, including the United States and European Union, in which we overcame initial refusals based on the objections that the mark was generic. We also oversee the SIG's worldwide trademark licensing program; routinely work with customs officials around the world to seize and destroy shipments of counterfeit BLUETOOTH products; helped develop the SIG's "Brand Book" (trademark usage guidelines); and handle trademark disputes with unauthorized users of the Bluetooth trademarks.
- Facebook — Cooley supports the company's management of its "Facebook" mark, handling domestic and international trademark clearance and protection for this famous brand.
- LinkedIn — Cooley assists LinkedIn in assessing, developing, implementing and enforcing an international trademark program, including advice on brand strategy, search and clearance, protection, maintenance and enforcement of its marks.
- Rosetta Stone — Cooley represented Rosetta Stone, the world's leading language learning software company, in a high-profile trademark infringement action against a competitor and its Internet advertising affiliates based on unauthorized uses of the ROSETTA STONE brand as an Internet keyword and in online advertisements.
Representative Copyright and Advertising Cases
- MGM Studios Inc. v. Grokster Ltd. — This landmark case involved the issue of secondary liability for copyright infringement based on unlawful uses made of file-sharing software distributed by Grokster and StreamCast. Cooley attorneys filed an amicus brief in the United States Supreme Court on behalf of nine emerging technology companies. The brief urged the Court to preserve the test for contributory copyright infringement established in Sony Corp. of America v. Universal Studios, Inc., which presently balances the relative interests of copyright holders, existing and emerging technology companies, and the public. The brief also argued that MGM's proposed test for infringement required a complex after-the-fact liability analysis and, as compared to Sony's simpler before-the-fact test, would increase the legal uncertainty for inventors, entrepreneurs, and investors deciding whether to pursue commercialization of a new technology. The Court's unanimous opinion cited the Cooley-authored brief (125 S. Ct. 2764, 2775 (2005)), and Justice Breyer's concurring opinion sounded many of its themes.
- Related Materials:
- Mutual Pharmaceutical Company – We obtained a preliminary injunction on behalf of Mutual Pharmaceutical Company, Inc. against two large pharmaceutical companies preventing the companies from selling unapproved quinine sulfate products on "Price Lists" .
- NCsoft Corporation — We successfully defended NCsoft Corporation, maker of the blockbuster online role-playing game City of Heroes , against trademark and copyright infringement claims made by Marvel Comics
- XM Satellite Radio — We represent XM Satellite Radio as defense counsel in multiple cases in which recording companies allege copyright infringement.
- WhenU.com, Inc.
- We successfully represented WhenU.com, Inc., an online advertising company, in a series of lawsuits alleging that its online advertisements infringe the trademark and copyrights of Website owners. In 1-800 Contacts v. WhenU, the United States Court of Appeals for the Second Circuit ruled that WhenU's software-generated advertising does not constitute a trademark "use" as a matter of law. The Court of Appeals reversed the district court's preliminary injunction order and directed it to dismiss the trademark infringement claims with prejudice. The case attracted a number of amici, and the decision has received widespread attention in the media.
- When the State of Utah passed the "Spyware Control Act," a law that would have had far-reaching consequences for WhenU and other legitimate Internet businesses, Cooley commenced an action in Utah state court, asserting that the Act is unconstitutional and barred by copyright preemption. The Utah court agreed, and enjoined the Act from going into effect on the ground that it violated the Commerce Clause.