Chief Judge Kozinski

The Ninth Circuit held that the domain names buy-a-lexus.com and buyorleaselexus.com could be fair use of the Lexus trademark. Toyota Motor Sales, U.S.A., Inc. v. Tabari, opinion by Judge Kozinski dated July 8, 2010. Excerpts are below.

The district court applied the eight-factor test for likelihood of confusion articulated in AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir. 1979), and found that the Tabaris’ domain names — buy-a-lexus.com and buyorleaselexus.com— infringed the Lexus trademark. But we’ve held that the Sleekcraft analysis doesn’t apply where a defendant uses the mark to refer to the trademarked good itself. … The Tabaris are using the term Lexus to describe their business of brokering Lexus automobiles; when they say Lexus, they mean Lexus. We’ve long held that such use of the trademark is a fair use, namely nominative fair use. And fair use is, by definition, not infringement.”
…
In cases where a nominative fair use defense is raised, we ask whether (1) the product was “readily identifiable” without use of the mark; (2) defendant used more of the mark than necessary; or (3) defendant falsely suggested he was sponsored or endorsed by the trademark holder.
…
The third factor speaks directly to the risk of such confusion, and the others do so indirectly: Consumers may reasonably infer sponsorship or endorsement if a company uses an unnecessary trademark or “more” of a mark than necessary. But if the nominative use satisfies the three-factor New Kids test, it doesn’t infringe. If the nominative use does not satisfy all the New Kids factors, the district court may order defendants to modify their use of the mark so that all three factors are satisfied; it may not enjoin nominative use of the mark altogether.
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The injunction here is plainly overbroad … because it prohibits domain names that on their face dispel any confusion as to sponsorship or endorsement. The Tabaris are prohibited from doing business at sites like independent-lexus-broker.com and we-are-definitely-not-lexus.com, although a reasonable consumer wouldn’t believe Toyota sponsors the websites using those domains. Prohibition of such truthful and non-misleading speech does not advance the Lanham Act’s purpose of protecting consumers and preventing unfair competition; in fact, it undermines that rationale by frustrating honest communication between the Tabaris and their customers.
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[Under the injunction by the Trial Court, t]he Tabaris may not do business at lexus- broker.com, even though that’s the most straightforward, obvious and truthful way to describe their business. The nominative fair use doctrine allows such truthful use of a mark, even if the speaker fails to expressly disavow association with the trademark holder, so long as it’s unlikely to cause confusion as to sponsorship or endorsement.
…
The inclusion of such words [e.g. "independent"] will usually negate any hint of sponsorship or endorsement, which is why we mentioned them in concluding that there was no infringement in Volkswagenwerk. …But that doesn’t mean such words are required … Our subsequent cases make clear they’re not.
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[in footnote 3:]
Where these or other factors suggest that nominative use is likely to cause confusion, a disclaimer may well be necessary. But a disclaimer is not required every time a URL contains a mark.
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When a domain name consists only of the trademark followed by .com, or some other suffix like .org or .net, it will typically suggest sponsorship or endorsement by the trademark holder.
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Toyota asserts that, even if the district court’s injunction is overbroad, it can be upheld if limited to the Tabaris’ actual domain names: buyorleaselexus.com and buy- a-lexus.com. We therefore apply the three-part New Kids test to the domain names, and we start by asking whether the Tabaris’ use of the mark was “necessary” to describe their business. Toyota claims it was not, because the Tabaris could have used a domain name that did not contain the Lexus mark. It’s true they could have used some other domain name like autobroker.com or fastimports.com, or have used the text of their website to explain their business. But it’s enough to satisfy our test for necessity that the Tabaris needed to communicate that they specialize in Lexus vehicles, and using the Lexus mark in their domain names accomplished this goal.
…
[in footnote 9:]
The Seventh Circuit has similarly upheld the right of a seller of Beanie Babies to operate at “bargainbeanies.com” on the grounds that “[y]ou can’t sell a branded product without using its brand name.”
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The disclaimer stated, prominently and in large font, “We are not an authorized Lexus dealer or affiliated in any way with Lexus. We are an Independent Auto Broker.” While not required, such a disclaimer is relevant to the nominative fair use analysis. … Because there was no risk of confusion as to sponsorship or endorsement, the Tabaris’ use of the Lexus mark was fair.
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On remand, Toyota must bear the burden of establishing that the Tabaris’ use of the Lexus mark was not nominative fair use. A finding of nominative fair use is a finding that the plaintiff has failed to show a likelihood of confusion as to sponsorship or endorsement. … A defendant seeking to assert nominative fair use as a defense need only show that it used the mark to refer to the trademarked good, as the Tabaris undoubtedly have here. The burden then reverts to the plaintiff to show a likelihood of confusion.
…
We vacate and remand for proceedings consistent with this opinion. At the very least, the injunction must be modified to allow some use of the Lexus mark in domain names by the Tabaris. Trademarks are part of our common language, and we all have some right to use them to communicate in truthful, non-misleading ways.

The opinion did not mention the Anticybersquatting Consumer Protection Act. The ACPA prohibits cybersquatting on a domain name that is confusingly similar to another person’s trademark, with a bad faith intent to profit from the registration typically by selling the domain name to the trademark owner.

The Tabaris ran an actual automobile brokerage business using their websites, and nothing was said about any attempt to sell the domain names to Toyota. In the absence of intent to profit by selling the domain names, there was no bad faith under the ACPA, and the ACPA was not applicable.

For additional commentary on the trademark infringement issues raised in the opinion, see blog post by Prof. Barbara Tushnet, and a blog post by Prof. Eric Goldman that compares this opinion to an earlier domain name opinion, also by Judge Kozinski.

The long awaited opinion by the US Supreme Court in the Bilski case was released today and discusses business method patents, but does not yet invalidate them. For the opinion click here.

Holding not based on invalidity of business method patents

The opinion by Justice Kennedy affirmed the denial of a patent, based on the unpatentability of abstract ideas. However, the opinion did not preclude business method patents.

“Petitioners’ application seeks patent protection for a claimed invention that explains how buyers and sellers of commodities in the energy market can protect, or hedge, against the risk of price changes. The key claims are claims 1 and 4. Claim 1 describes a series of steps instructing how to hedge risk. Claim 4 puts the concept articulated in claim 1 into a simple mathematical formula.”

Business method patent on energy hedging process?

The opinion leaves the limits of business method patents for future development.

Section 101 similarly precludes the broad contention that the term “process” categorically excludes business methods. The term “method,” which is within §100(b)’s definition of “process,” at least as a textual matter and before consulting other limitations in the Patent Act and this Court’s precedents, may include at least some methods of doing business.

. . .

[W]hile §273 appears to leave open the possibility of some business method patents, it does not suggest broad patentability of such claimed inventions.

. . .
Finally, even if a particular business method fits into the statutory definition of a “process,” that does not mean that the application claiming that method should be granted. In order to receive patent protection, any claimed invention must be novel, §102, nonobvious, §103, and fully and particularly described, §112. These limitations serve a critical role in adjusting the tension, ever present in patent law, between stimulating innovation by protecting inventors and impeding progress by granting patents when not justified by the statutory design.

…

petitioners’ claims are not patentable processes because they are attempts to patent abstract ideas. Indeed, all members of the Court agree that the patent application at issue here falls outside of §101 because it claims an abstract idea.

Concurring opinion hostile to business method patents

The concurring opinion by Justice Stevens makes a statement about business method patents.

The wiser course would have been to hold that petitioners’ method is not a “process” because it describes only a general method of engaging in business transactions—and business methods are not patentable.    More precisely, although a process is not patent-ineligible simply because it is useful for conducting business, a claim that merely describes a method of doing business does not qualify as a “process” under §101.

The Stevens concurring opinion comments on the economic effect of business method patents.

Even if a business method patent is ultimately held invalid, patent holders may be able to use it to threaten litigation and to bully competitors, especially those that cannot bear the costs of a drawn out, fact-intensive patent litigation. That can take a particular toll on small and upstart businesses. Of course, patents always serve as a barrier to competition for the type of subject matter that is patented. But patents on business methods are patents on business itself. Therefore, unlike virtually every other category of patents, they are by their very nature likely to depress the dynamism of the marketplace.

Also available online are the merit briefs and amicus briefs that were submitted.

A recent Ninth Circuit opinion sets out an expansive jurisdiction analysis. The case was for copyright infringement.

The opinion sets out the minimum contacts requirement for jurisdiction.

“This Court employs a three-prong test to determine whether a party has sufficient minimum contacts to be susceptible to specific personal jurisdiction:
(1) The non-resident defendant must purposefully direct his activities or consummate some transaction with the forum or resident thereof; or perform some act by which he purposefully avails himself of the privilege of conducting activities in the forum,
thereby invoking the benefits and protections of its laws;
(2) the claim must be one which arises out of or relates to the defendant’s forum-related activities; and
(3) the exercise of jurisdiction must comport with fair play and substantial justice, i.e. it must be reasonable.”

The Court then discussed the first requirement, of purposeful direction or availment. A purposeful availment analysis applies to contract actions; a purposeful direction analysis applies to tort actions.

Since copyright infringement is characterized as a tort, purposeful direction is determined using the three-part “Calder-effects” test, taken from the U. S. Supreme Court’s decision in Calder v. Jones, 465 U.S. 783 (1984).

Under this test, “the defendant allegedly must have (1) committed an intentional act, (2) expressly aimed at the forum state, (3) causing harm that the defendant knows is likely to be suffered in the forum state.”

The mere maintenance of a passive website alone cannot satisfy the express aiming requirement.

The express aiming requirement is satisfied when the defendant engaged in wrongful conduct targeted at a plaintiff, and the defendant knows the plaintiff is a resident of the forum state.

“By thus individually targeting Brayton Purcell, a known Forum resident, Recordon expressly aimed its conduct at the Forum. Assuming the dissent is correct that something more than knowledge of the residence of the plaintiff is required for there to be express aiming at the Forum, such a requirement is satisfied here; the parties are competitors in the same business so that the intentional infringement will advance the interests of the defendant to the detriment of the Forum interests of the plaintiff. The express aiming prong is therefore satisfied.”

The dissent argues that this was not enough.

“Pebble Beach and Schwarzenegger establish that knowledge of the plaintiff’s residence and a foreseeable harm to the plaintiff are, standing alone, insufficient to establish express aiming; ‘something more’ is required in order for the state of the plaintiff’s residence to constitute a proper forum.”

The opinion is available at Brayton Purcell v Recordon & Recordon.

On the job accidents

The workplace, especially construction sites, can be dangerous. The landlord may not have inspected and corrected unsafe conditions. The general contractor may have tolerated a dangerous situation, and a construction worker can be injured or killed.

If the person injured or killed was on the job, then he will be covered by workers compensation. The injury will be covered, and there is no requirement to prove that anyone was at fault or negligent. Moreover, the worker is covered even if the worker himself was negligent. The disadvantage of workers compensation is that the amount paid out is low. The workers compensation law includes a bar to any additional claim against the employer.

There can be additional claims, beyond the workers comp claim, against other companies in the case of a job site injury.

For example, the injury could have been caused by dangerous equipment. This is called a products liability claim.

In addition, there can be an Employer Liability Law claim. Some states, including Oregon, provides a law that protects the worker. The Employer Liability Law applies generally as follows.

Before the Employer Liability Law can be made basis of claim for relief by injured worker suing defendant other than employer of worker, defendant must be in charge of or have responsibility for work involving risk or danger in either (a) situation where defendant and plaintiff’s employer are simultaneously engaged in carrying out work on common enterprise, or (b) situation in which defendant retains right to control or actually exercises control as to manner or method in which risk-producing activity is performed. Miller v. Georgia-Pacific, 294 Or 750, 662 P2d 718 (1983)

Here is the general provision requiring every care, even when expensive:

Oregon Revised Statutes 654.305 Protection and safety of persons in hazardous employment generally. Generally, all owners, contractors or subcontractors and other persons having charge of, or responsibility for, any work involving a risk or danger to the employees or the public shall use every device, care and precaution that is practicable to use for the protection and safety of life and limb, limited only by the necessity for preserving the efficiency of the structure, machine or other apparatus or device, and without regard to the additional cost of suitable material or safety appliance and devices.

In applying the ORS 654.305 requirements, “Public” includes worker whose employer is engaged in common enterprise with in-charge third party. Trout v. Liberty Northwest Ins. Corp., 154 Or App 89, 961 P2d 235 (1998).

All owners and companies involved must comply with the Employer Liability Law safety requirements:

Oregon Revised Statutes 654.310 Places of employment; compliance with applicable orders, rules. All owners, contractors, subcontractors, or persons whatsoever, engaged in the construction, repairing, alteration, removal or painting of any building, bridge, viaduct or other structure, or in the erection or operation of any machinery, or in the manufacture, transmission and use of electricity, or in the manufacture or use of any dangerous appliance or substance, shall see that all places of employment are in compliance with every applicable order, decision, direction, standard, rule or regulation made or prescribed by the Department of Consumer and Business Services pursuant to ORS 654.001 to 654.295, 654.412 to 654.423 and 654.750 to 654.780.
Oregon Revised Statutes 654.315 Persons in charge of work to see that ORS 654.305 to 654.336 are complied with. The owners, contractors, subcontractors, foremen, architects or other persons having charge of the particular work, shall see that the requirements of ORS 654.305 to 654.336 are complied with.
Oregon Revised Statutes 654.320 Who considered agent of owner. The manager, superintendent, foreman or other person in charge or control of all or part of the construction, works or operation shall be held to be the agent of the employer in all suits for damages for death or injury suffered by an employee.

The law is well established that there are 3 ways a company can have liability for an injury on the job: To recover under Employer Liability Law against person other than the injured worker’s employer, the injured worker must establish that defendant

• had actual charge of plaintiff’s work; or
• had right to control manner in which plaintiff performed that work; or
• that defendant and plaintiff’s employer were engaged in work on common enterprise.

Torres v. US National Bank of Oregon, 65 Or App 207, 670 P2d 230 (1983), Sup Ct review denied; Quackenbush v. PGE, 134 Or App 111, 894 P2d 535 (1995), Sup Ct review denied; Moe v. Eugene Zurbrugg Construction Co., 202 Or App 577, 123 P3d 338 (2005).

If you or a loved one had a serious injury or death on the job, you should consider whether additional companies, beyond the employer, have liability for an Employer Liabilty Law claim. For more articles about accidental injury claims, see the personal injury accident page. If you would like a free consultation, see the contact page.

These resources are for those injured in accidents, and their families.

Construction site injuries, including Employer Liability Law claims. According to OSHA, one of every five workplace fatalities is a construction worker.

If the injured person died as a result of the accident, see death accident claims.

Electrical accident injuries, including trees left to grow and hide power lines.

Forms:

Form of Notice of Deposition under Federal Rules of Civil Procedure 30(b)(6)

This form is based on a notice of deposition used in a major personal injury case. Time spent on the topics to be covered will be valuable. Answers to requests for admissions can sometimes be avoided, but it is difficult for an adverse party to avoid deposition answers made by a witness who knows the party’s history.

[Caption and format as required by local rules, typically including:
Plaintiff's Notice of Deposition to Defendant XYZ Company Under FRCP 30 (b) (6) Duces Tecum]

To:  defendant XYZ COMPANY, and its Attorneys,
John Smith, Esq.
Karen Jones, Esq.
Smith Jones Brown
1000 SW Main
Portland OR 97204

You and each of you please take notice that at 9:00 a.m., on July 9, 200_, at the offices of Smith Jones Brown, 1000 SW Main, Portland OR 97204, the undersigned will take the deposition of defendant XYZ COMPANY upon oral examination before a court reporter. You are required to attend and are invited to cross-examine.  The oral examination will continue until complete. The testimony will be recorded by stenographic means and by video taping.

The deposition will be in accordance with Federal Rules of Civil Procedure 30 (b) (6), and the designee(s) will be examined on these topics:

1. Safety standards used or referred to by XYZ Company that relate to [cause of the injury or death] as applicable to the period of 200_ through 200_. Plaintiff’s counsel expects that this will include 29 CFR _____ [set out known safety standards]. In any event the witness will need to testify about sources XYZ Company referred to for safety standards for the relevant period. The witness will need to be familiar with the specific application of the relevant standards to [the situation that caused the injury or death].

2. As pertaining to the [other relevant writing]: what XYZ Company understood to be its obligations for _____________ in 200_ and 200_ as to _________, what did XYZ Company do to communicate its expectations about ___________, what did _______ do or communicate in response, and what did XYZ Company know, before [relevant date, perhaps date of injury], about [the condition that led to the injury or death].

3. Other information about the incident that resulted in [injury or death].

AND BRING WITH YOU the following documents:

1. Sources XYZ Company refers to for safety standards, as applicable to the period of 200_ through 200_.

Signed ______________.

s/ E. J. Simmons
____________________________
E. J. Simmons
[additional information as required by local rule]
Attorney for Plaintiff ________

[Certificate of service]

You may want to include the letter to adverse counsel that I recommend in the post about forcing efficient 30(b)(6) depositions.

When someone is killed in an accident, and it was caused by someone’s negligence, it is called wrongful death.

A claim for death caused by negligence is brought under the wrongful death statute. The quotes below are from Oregon Revised Statutes 30.020.

“Action for wrongful death; when commenced; damages. (1) When the death of a person is caused by the wrongful act or omission of another, the personal representative of the decedent, for the benefit of the decedent’s surviving spouse, surviving children, surviving parents … may maintain an action against the wrongdoer …”

The statute of limitations for wrongful death is generally three years:

“In no case may an action be commenced later than the earliest of:
(a) Three years after the death of the decedent; or
(b) The longest of any other period for commencing an action under a statute of ultimate repose …”

However, the tort claim notice statute has additional time limits for giving notice of the claim and filing the case. An attorney should be consulted on death cases.

The amount to be awarded for wrongful death is based upon these factors:

“reasonable charges necessarily incurred for … medical services, burial services and memorial services …;
… for disability, pain, suffering and loss of income during the period between injury to the decedent and the decedent’s death;
… for pecuniary loss to the decedent’s estate;
… compensates the decedent’s spouse, children, stepchildren, stepparents and parents for pecuniary loss and for loss of the society, companionship and services of the decedent; and
… the punitive damages, if any, which the decedent would have been entitled to recover from the wrongdoer if the decedent had lived.”

Most wrongful death claims present similar issues to other personal injury cases, including proof of the negligence of the defendant company.

This site now offers a fast and free search engine, to find relevant Oregon cases from the last ten years. Included are Oregon cases about civil law, criminal law, negligence, contracts and all the other issues that were appealed. The search results link to the slip opinions of the Oregon Supreme Court and Oregon Court of Appeals.

You can get much of what you need in 10 minutes using this feature. Just put the relevant words into the search box, and click on the Go! button.

If you get more than 50 results, add more words to the search box to narrow down the results. You may see that you need to put in a negative term to eliminate irrelevant results that tend to include your search words.

Then, print the first results page. The first page of results will have the top 10 cases, put at the top by the statistical ranking calculated by the search program.

With the print out in hand, start clicking on the results, top to bottom. If a case is irrelevant, cross it off and go to the second, etc. In a few minutes you will have close to a finished understanding of the relevant law.

This search facility is fast. I suspect it is much faster than the competition. In fairness to the competition, the database is only 10 years of case law. You are invited to run a speed test comparison and let me know what your experiment reveals.

The site works reasonably well if you use an iPhone or a T-Mobile G1 phone, given the limitation of using the small screen on such a smart phone. Making a search from your smart phone may be of use if you need a quick look while you are out of the office, perhaps while waiting in the courthouse and you just spotted another issue.

Your comments are invited, and will help improve the search facility.

- E. J. Simmons

Click here to return to the Search Page.

Search slip opinions of the Oregon Supreme Court, Oregon Court of Appeals, and Oregon Tax Court, from 1998 through April 2, 2009 for the Oregon Supreme Court and through April 1, 2009 for the Oregon Court of Appeals.

Easy search

Click in the check box to agree to the terms and conditions, then type a word or words of interest in the box above, then click on the Go! button.

For example, enter the word “easement” (without the quotation marks) and click on the Submit button. You will get back your query with a list of cases. The search engine uses a statistical analysis to rank the matching cases for you.

Phrases

To search for a phrase, put the phrase in quotation marks, as in “ballot title”.

If you forget to put parentheses around the phrase “ballot title”, then you will get all the cases that use the word “title” including car title cases and real estate title cases. Many irrelevant cases. When there are no quotation marks around the words, the search engine assumes that you want every case that includes the given words even if not together in the case.

Read the cases found

You can click on the case number and read the opinion. Use right-click (Windows) or Ctrl-click (Mac) to open the opinion in a new tab, much more convenient for referring back to the search results.

Click here to return to the Search Page.

Boolean search

Most searches will be done by simply putting words into the box. But if you get too many cases, or need to make a more complicated search, you will want to use Boolean search terms in the box. This will allow exclusion of cases with certain words and other conditions

Boolean queries allow the following special operators to be used:
For AND use “&” (without the quotes).

For OR use “|” (without the quotes). This is not the lower case L “l” or number one “1? character, this is the pipe character, a vertical line usually found above the “\” key on the right of your keyboard.

For NOT use “-” or “!” (without the quotes).

For GROUPING enclose the terms in parentheses. Grouping is used for some very specialized searches.

Here are some examples:
* explicit operator AND: hello & world
* operator OR: hello | world
* operator NOT: hello -world [or the same thing: hello !world ]
* grouping: ( hello world )

Here is an example of a Boolean search query which uses all these operators:
( cat -dog ) | ( cat -mouse)

The AND operator is always implied, so “hello world” query (witout the quotation marks) actually searches for the same thing as “hello & world” (without the quotation marks).

OR operator precedence is higher than AND, so “looking for cat | dog | mouse” means “looking for ( cat | dog | mouse )” and not “(looking for cat) | dog | mouse”. That is, the search will return opinion that satisfy any one or more of these 3 conditions: “looking for cat”, “looking for dog”, or “looking for mouse”.

Queries like “-dog”, that is, search for every opinion that does not not include the word “dog”, might include every single case. To prevent this, such a search will not be accepted by the system.

No Wildcard: No wildcard is provided for this search. Longer words that include what you enter, will be returned. For example, “employ” will search for employ, employer, employee, employment. Also, words with the same word root will be returned. For example, “employer” will return “employee”.

Click here to return to the Search Page.

Questions?: If you have any questions or feedback, please use the contact email form.

Of course, no warranty is intended by providing this service. Traditional means should be used to verify any opinion language before it is used or relied upon. Any non-lawyer who may access this page is warned: consult a lawyer. If you do not have a lawyer, you may call the Oregon State Bar’s Lawyer Referral Service at 503-684-3763 or visit the Lawyer Referral web page.

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for the Members of the Bar
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