Stanford Center for Internet and Society

Author: Morgan Galland

In E.S.S. Entertainment 2000, Inc. v. Rock Star Videos, Inc., the United States Court of Appeals for the Ninth Circuit ruled that the makers of a popular video game did not violate section 43(a) of the Lanham Act by depicting a modified version of plaintiff’s Los Angeles strip club. On Appeal from the United States District Court for the Central District of California, the Ninth Circuit upheld a summary judgment decision for defendants, holding that use of a modified trademark in a video game to create a parody of a real setting is protected under the First Amendment of the United States Constitution. In doing so, it expanded the traditional application of the test developed by the Second Circuit in Rogers v. Grimaldi, 875 F.2d 994, 999 (2nd Cir. 1989).

Author: Jenny Kim

The U.S. District Court for the Northern District of California dismissed Bennett v. Hosting.com for improper venue last November. The plaintiff’s company, HowFastTheyGrow.com, had signed an agreement to litigate all disputes in Jefferson County, Kentucky when contracting the defendant’s web-hosting services. The court upheld the forum selection clause despite Bennett’s contention that it was unenforceable for unconscionability and inapplicable to her tort claims.

Plaintiff Blue Nile, Inc. and Defendant Ice.com both own and operate online diamond and fine jewelry retail sales businesses. Plaintiff alleged that Defendant copied both certain elements of Plaintiff’s website in violation of the Copyright Act and the “overall look and feel” of Plaintiff’s diamond search webpages in violation of the Lanham Act. Under Fed. R. Civ. P. 12(b)(6), Defendant moved to dismiss Plaintiff’s claim of trade dress infringement and three state law claims—violation of Washington’s Consumer Protection Act, unfair competition, and unjust enrichment and restitution—on the grounds that these were preempted by Plaintiff’s copyright claims. The District Court for the Western District of Washington (i) denied Defendant’s motion to dismiss Plaintiff’s trademark infringement claim finding that a developed factual record was necessary given the novel nature of the claim, but (ii) granted Defendant’s motion to dismiss on the three state law claims.

Blue Nile, Inc. v. Ice.Com, Inc., No. C06-1002RSL (W.D. Wash. 2007).