The case began in 2011 after Black Tower Press, a publisher of sci-fi and fantasy titles, filed a trademark suit in response to Apple’s announcement that it would use the word “iBooks” to describe software that allows users to purchase online books. Here’s a look at the two marks:

Black Tower came into possession of the “ibooks” mark in 2006 by purchasing the assets of another publishing company that had used the word for an imprint that sold millions of sci-fi and horror books in the early 2000′s. Neither Black Tower nor its predecessor, however, obtained a registered trademark for the word.

Apple, on the other hand, did obtain registered trademark rights. It first obtained a license to use “iBook” from another software company in 1999 to describe a line of colorful computers; in 2010, Apple bought the other company’s trademark entirely.

In a detailed decision, U.S. District Judge Denise Cote explained that the word “ibooks” was simply descriptive of books sold on the internet, and that Black Tower had not acquired any distinctive meaning in the word — only in the word and lightbulb logo used together.

Cote also wrote that she was granting summary judgment to Apple for a second reason: that no consumers would be confused by the two companies’ products:

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The plan comes as the fame of Grumpy Cat, a Snowshoe Siamese with a perpetually dour expression, continues to grow. Last week, the cat stole the show at the tech and music festival, SXSW, where people lined up for hours to take pictures with her. Grumpy Cat was also hired by BuzzFeed but had a bad first day on the job.

The trademark applications, which also cover hoodies and comedy videos, were filed in January on behalf of Ohio-based Grumpy Cat Incorporated. Los Angeles lawyer Kia Kamran, confirmed by email that the company is controlled by Tabatha and Bryan Bundesen, the siblings who own the cat and helped build her fame.

Kamran, who also represents Mike Tyson, says he hasn’t filed any Grumpy Cat lawsuits yet, but probably will soon in response to the “current wave of infringers that are popping up.” He adds that, while he’s sensitive to the cultural dimensions of internet memes, he’s had to take action on behalf of other clients, Nyan Cat and Keyboard Cat.

Standing up for the feline will be a challenge, however, since Grumpy Cat is a cat not a person. Unlike human celebrities, animals can’t invoke “personality rights” which let them control their image. The Bundesens, if their application is successful, will nonetheless be able to control the commercial use of the phrase “grumpy cat” and photographs they own of the cat.

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In a letter addressed to ICANN and posted on the Guild’s website, President Scott Turow stated the group “strongly object to ICANN’s plans to sell the exclusive top-level domain rights for generic book-industry terms.” The Wall Street Journal reports the publishing group has similar objections. (Update: the AAP sets out the reasons for its objections in a letter here.)

The issue, which remains arcane for many outside of the domain name industry, arose as part of ICANN’s decision to open up the list of top-level domains to all comers. In practice, this means hundreds of new suffixes will join familiar ones like “.com” and “.org” as part of the internet. It also means companies that win the right to control names can choose between keeping the names for their own use or earning money when the names are bought and sold in the open market.

Both Amazon and Google have paid to obtain the right to run hundreds of new names though it’s still unclear what the companies intend to do with them. Google has indicated it will keep suffixes related to its core business, such as “.goog” or “.search,” for its private use while making others like “.store” and “.dog” open to anyone. Amazon, which also wants to run names like “.kindle” and “.movie” declined to respond to the Wall Street Journal’s request for comment.

Barnes & Noble has also objected that Amazon could abuse its control over the names to the detriment of the publishing industry. In theory, this could occur if Amazon agreed to to grant a “.book” or “.author” website to favored writers or publishers but not to rivals.

Google and Amazon are just two of hundreds of companies applying to run the new domain names. In some cases, there is only one applicant for the name while in other cases multiple firms have asked ICANN to run names like “.movie.” In the latter situation, ICANN will choose between the competing applicants. (You can see the full list of proposed names and applicants here).

The timing and the process for the arrival of the new names is unclear. In no small part, this is due to the murky operations of ICANN. The LA-based organization is nominally a nonprofit with a mission to run the internet’s naming system, but it has attracted controversy for failing to protect trademark owners who accuse it of facilitating “shakedowns,”  and for self-dealing among its members.

Last week, the CEO of GoDaddy, which is the world’s biggest registrar of domain names, predicted the first series of new names will arrive in June and that others will be rolled out in batches of 20 in the weeks that follow.

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Reuters reported Thursday that Apple has asked for a review of the decision by the National Institute of Industrial Property (INPI). That decision, announced Wednesday, was that since local Brazilian company Gradiente Electronica had filed the iPhone trademark in 2000 — seven years before Apple introduced the iPhone — and released a product with the name in December 2012, Apple did not have exclusive rights to use iPhone.

As part of the review, Gradiente will have to establish a few things, according to Reuters:

Now, in order to keep its trademark rights, Gradiente will need to prove to the regulator in the next 60 days that it made use of the trademark between January 2008 and January 2013, Inpi said late on Wednesday. Brands in Brazil must be developed within 5 years of gaining approval.

With the “iPhone” smartphone Gradiente began selling in December, it appears to have met those guidelines. But that’s most certainly not going to be the end of this story, since Apple can take the case to court.

This is beginning to look as though it could play out the same way an iPad trademark case did in China last year. Like Brazil, China has a “first-to-file” policy that tends to favor the first person to file a trademark, not necessarily the first user. A Chinese company, Proview, had registered the trademark for iPad before Apple made the device. Apple said it bought the rights to the iPad trademark from Proview in 2009, before the iPad was introduced, for $55,000. Facing bankruptcy in 2012, Proview’s parent company disputed the sale and tried to get the iPad excluded from sale in China. After months of legal battles, Apple ended up paying a sort of ransom of $60 million as a settlement.

Settlement with Apple might be the ultimate goal here for Gradiente too. Its CEO has said from the moment this became international news that he’s willing to talk and is “open to dialogue about anything” with Apple.

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Gradiente was granted the iPhone trademark in 2008. Apple began selling its iPhone in 2007. Though the company has a different name now (IGB Electronica SA) it began selling a device in the country it calls the iPhone in December 2012. (To add a little insult to injury, the device runs Android.)

Both companies can use the trademark, the Institute of Industrial Property ruled, but Gradiente has the option of suing for exclusive use of it since it registered the name first, according to the report. Apple, meanwhile, is still the only company that can legally sell software, clothing and publications with the iPhone trademark. So, there’s that.

The agency told the BBC that Apple is already planning to appeal. Apple did not immediately respond to a request for comment on the story.

The Brazilian company is said to be willing to make a deal with Apple. IGB Chairman Eugenio Emilio Staub told Bloomberg last week his company was “open to a dialogue for anything, anytime … We’re not radicals.”

This is perhaps a temporary setback for Apple, which has high hopes for the country as a market for iPhones and other products. Last year, CEO Tim Cook specifically mentioned Brazil as the most interesting emerging market — after China – for Apple.

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Once again, the seizures came with fancy code names — “Project Monday 3″ and “Project Transatlantic” — and were touted by various federal agencies, including the Justice Department and ICE. This year’s event had a continental flavor thanks to the seizure of 31 European domain names, including those ending in .eu, .be, .dk, .fr, .ro and .uk.

The seizure of 132 sites are part of a twice-yearly ritual that the government conducts on Cyber Monday and shortly before the Super Bowl. The idea is to stand up for intellectual property owners and to protect consumers from buying bogus goods.

The law enforcement actions are by and large justified. After all, trademark law forbids selling fake Tiffany jewelry or Nike shoes on the street or in a store. Should the rules be different online?

But while the enforcement goals may be legitimate, some of the government’s tactics are questionable at best. Why, for instance, is this vested under the Department of Homeland Security? Isn’t this agency supposed to be finding Al Qaeda members rather than patrolling the internet for fake Tom Brady jerseys?

Likewise, the government’s authority to grab the domain names may rest on shaky legal ground. As we’ve reported before, the feds are relying on seizure laws intended to confiscate the property of drug dealers — and in some cases are using the seized sites to play copyright propaganda without any apparent legal right to do so.

The feds’ announcement did not identify which websites they seized but the information will come out in coming days.

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To prove its point, the Village Voice is suing user-review site Yelp for posting pages like this one:

The Voice’s publisher now wants Yelp to pay triple damages for using the “best of” monicker in relation 10 cities, including Miami, St Louis and Dallas. The complaint also seeks an injunction against Yelp.

Yelp declined to comment on the lawsuit.

This isn’t the first time the Voice’s publisher has tried this trademark trick. Last year, the one-time icon sued Time Out New York over the magazine’s annual “best of NYC” issue. The publisher claimed it was asserting its intellectual property but Time Out New York counter-sued, arguing the term “best of” is generic. The Voice lawsuit provoked widespread derision from newer New York media sites like Gothamist.

More broadly, the lawsuits reflects Village Voice Media Holding’s efforts to find more revenue streams at a time when alternative newspapers have lost their cachet.  The company, now known as Voice Media Group, recently spun off its classified service, Backpage.com, which critics claim was a vehicle for sexual exploitation.

You can view the complaint, first reported by Law360 (sub req’d), against Yelp for yourself here:

IMAGE 10-29-12 112805

(Image by  Melle V)

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The complaint says Uber is deceiving consumers about the amount they pay for the fares:

Uber adds an automatic “20% gratuity” onto the metered fare. Uber misleads the public and fails to disclose to consumers that only half of such “gratuity” actually goes to the driver. The remaining half, in fact, goes to Uber.

The taxi groups also claim that marketing terms like “Uber Black Car” and “Uber Taxi” violate trademark laws because they confuse consumers.

The Chicago dispute is the latest and most dramatic episode in a battle that is playing across the country as Uber competes with the powerful taxi lobby in various cities. The upstart has become a hit because it allows customers, who place their credit cards on file, to quickly summon a car with an app that recognizes their location and customers can rate the drivers at the end of the trip.

The taxi lobby is leaning heavily on city governments to shut down the service, claiming it is a danger to the public. In this week’s court complaint, the cab companies blast Uber for creating a two-tier taxi service that caters to rich hipsters (emphasis ours):

The complaint, which is embedded below, seeks an injunction against Uber and damages to compensate the cabbies for lost profits.

Meanwhile, consumers have filed a separate class action lawsuit claiming they overpaid for Uber’s rides.

Update: This story has been amended to clarify that taxi companies, not drivers, are suing Uber. See Uber CEO Travis Kalanick’s comment below.

Yellow Cab v Uber
(Image by  sababa66 via Shutterstock)

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Qian Jin of Nanjing, China, has applied to register marks like Foursquare, Twitter, Quora and Instagram and has also bought dozens of websites like Pinterests.com and Pinterest.de

Qian’s activities are described in a lawsuit filed by Pinterest last week in San Francisco. In its complaint, the popular image site says the defendant is a “serial cyber-squatter who has registered and owns hundreds of infringing domain names.” The company points to Qian’s “Pinterests.com“, a site that uses red-lettering similar to Pinterest but that appears to be just a dumping ground for advertisements.

While this type of cyber-squatting has been around for years, the Chinese efforts stand out because they appear to systematically target up-and-coming internet firms, and because of the trademark applications.

While firms like Pinterest can challenge the trademark filings in the US if they are not in good faith, the situation in China is murkier. Increasingly, Chinese firms are obtaining questionable trademarks and successfully asserting them against companies like Apple. Peter Toren, a former prosecutor and Washington intellectual property lawyer, has previously described some of the cases against Apple as “a stick-up.“

Pinterest is asking the San Francisco court for damages and for an order barring Qian Jin or his associates from using its name. The company also wants the court to instruct the US Patent and Trademark Office to refuse the applications for “Pinterest” and “Pinterests.”

Here are some of the other names Pinterest is trying to reclaim, followed by a copy of its court complaint:

Pinterest Complaint

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Diller, who used to run Paramount and Fox, filed a complaint this week against BarryDriller.com, a new service that offers TV-on-the-go to west coast markets. The complaint notes Diller’s fame based on works like Raiders of the Lost Ark and Grease, and accuses BarryDriller of cyber-squatting, trademark infringement and stepping on Diller’s right to publicity. Diller had initially joked about BarryDriller, telling the Wall Street Journal, “I had hoped that if they steal my name they’d do it for something more provocative.”

Diller’s suit comes on the heels of a Fox lawsuit that says BarryDriller infringes the copyright for shows like The Simpsons and Glee. BarryDriller is run by David Alki, who launched the short-lived FilmON, a TV streaming service that the entertainment industry smothered in 2010. He appears to have named the new venture BarryDriller in an effort to generate publicity and, possibly, to stick a finger in the eye of Diller.

While Fox may be on the same side as Diller against BarryDriller, it is also part of a major effort by broadcasters to shut down his Aereo business, which offers TV and DVR services for around $12 per month. Fox and other broadcasters say Aereo, like BarryDriller, infringes copyright though they have failed so far to win an injunction.

Technology advances lead to legal pile-up

New technology and changing notions of TV is what lies at the heart of the legal pile-up. Specifically, Diller’s Aereo has been relying on a legal loophole that says one-to-one transmission is not broadcasting and therefore shouldn’t be considered copyright infringement. To make the argument hold up, Aereo points to a novel technology that gives every subscriber a dime-size antenna. Each antenna relays a personalized stream of over-the-air TV signals to subscribers’ iPhones.

Aereo also says its service is the legal equivalent of remote DVR recording technology, which courts have said doesn’t infringe copyright. But the broadcasters disagree, and claim Aereo is hiding behind a technicality. They says the “one antenna one user” theory doesn’t change the fact that Aereo is retransmitting shows without permission.

The dispute is about law, but also about money of course. The broadcasters recently won a drawn-out battle to force cable companies to pay them for retransmitting their shows and now, one suspects, they want Aereo to pay too. Diller, for now, says Aereo has no obligation to pay. BarryDriller’s Alki, on the other hand, has offered to pay retransmission fees.

If they build it, will anyone watch?

The legal snafus that have greeted new services like Aereo and FilmOn are part of a long-running pattern in which incumbent broadcasting interests want to control platforms against new disrupters.

In this case, however, copyright and copycats like BarryDriller may not be Aereo’s biggest problem. Instead, there is a question of whether the service will be viable from a business perspective. Aereo, which for now is only available in New York, is experimenting with new pricing incentives to get people to try the service but for now its prospects look uncertain at best.

Dan Rayburn, an analyst with Frost & Sullivan, recently told the LA Times that Aereo was “dead in the water for multiple reasons” even if it can win its court challenge.

Part of Aereo’s problem may be that there simply may not be that many situations where people want to pay to watch broadcast TV on a mobile device.

Here’s the legal complaint, which asks the defendant to hand over the BarryDriller.com name and to pay damages to Diller:

(Ed note: an earlier headline suggested it was Aereo who filed the suit. It is Barry Diller who is suing).

Diller v BarryDriller

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