• IP BLAWG

    Preliminary Injunction Backfire

    Beverly A. Berneman
    1/17/17

    If you don’t own it, asking for a preliminary injunction is the wrong strategy. %CUT%VitaVet Labs, Inc. sells horse vitamins. Its website was old and clunky. VitaVet hired Integrated Software Solutions, Inc. to update the site. According to the terms of the agreement, VitaVet owned the source code and had an absolute right to access it. VitaVita was to pay Integrated on an incremental basis upon receipt of deliverables. From almost the beginning, things went wrong. Integrated didn’t reach its project development goals. VitaVet paid some of the installments but VitaVet was not pleased with Integrated’s work. Meanwhile, VitaVet’s website was getting clunkier and harder to use. Integrated asserted that the software was finished but VitaVet didn’t agree. So VitaVet refused to pay the remaining installments. Integrated filed suit and sought a preliminary injunction. VitaVet countersued for a preliminary injunction seeking turnover of the source code. Usually, a preliminary injunction just maintains the status quo. The status quo was that Integrated had the source code and wouldn’t have to turn it over to VitaVet. But in this case, the trial court entered a preliminary injunction order that changed the status quo and ordered Integrated to turnover the source code to VitaVet. In affirming the decision, the California Appellate Court reasoned that the balance of equities favored disturbing the status quo in VitaVet’s favor. VitaVet owned the source code and VitaVet had a dire need to upgrade its website. So much for Integrated’s aggressive strategy against VitaVet.

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  • IP BLAWG

    All Dressed Up and Going Everywhere

    Beverly A. Berneman
    5/3/16

    Trade dress can help protect the look and feel of a website. %CUT% Many businesses put a lot of time and effort into their websites. With good reason. A website is the perfect place to show what the business can do and how it does it. But how can a business protect its well-designed website from being mimicked by a competitor? In Ingrid & Isabel, LLC v. Baby Be Mine, LLC, a California federal court denied the defendant’s motion for summary judgment on the issue of whether the plaintiff’s website could be protected as trade dress. In doing so, the court acknowledged that the "look and feel" of a website qualifies for trade dress protection.

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  • IP BLAWG

    Playing at Trademark Use Gets Nowhere

    Beverly A. Berneman
    1/26/16

    The owner of the PLAYDOM trademark learned that trademark use and “website under construction” don’t play nice together. %CUT% David Couture got a registered trademark in 2008 for PLAYDOM. His specimen of use was a website page that described his company’s services. But it also said “Website under construction”. Years later, another company tried to register PLAYDOM. The applicant, Playdom Inc. (later acquired by Disney Co.) was refused registration based upon a likelihood of confusion with Couture’s trademark. Playdom Inc. brought a cancellation proceeding and won. The Federal Circuit Court affirmed the TTAB cancellation holding that the website advertised Couture’s readiness to perform services but he didn’t render any services until 2 years later. This decision has come under fire because prior case law saw “offering services” to be the same as “rendering services”. Critics also argue that the Lanham Act (15 U.S.C. §1053) establishes a different standard for use for services; a standard that Couture met. So the fact that Couture was offering his services should have been enough.

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