SaltYou know you’ve chuckled at a few of them–the  ubiquitous internet meme.  But, have you ever wondered whether all this sharing, changing and going “viral” is legal.

Protecting or commercializing your meme

If you create or are the subject of a meme, it can be difficult to commercialize it or protect it. There are generally two “rights” that can be associated with a meme—trademark and copyright.

Copyright:  Copyright protects original works of authorship including literary, dramatic, musical, and artistic works, such as poetry, novels, movies, songs, computer software, and architecture. As the person who created a work, you have a copyright regardless of whether you file it with the U.S. Copyright Office.  To sue over a copyright, you need to register it, but your lack of registration does not otherwise lessen the right to claim something you created as yours.  If you take the picture, then generally you own the copyright. But, if you add a few new words to someone else’s picture, your addition does not likely transform ownership to you.

The point of internet memes, however, is that they be shared.  If you are aggressive and enforce your copyright, the meme won’t become, well, a meme.

Trademarks:  A trademark protects a word, phrase, symbol and/or design that distinguishes the source of the goods. These are brand marks that give a particular product or service a distinct identity or help consumers distinguish between various products or services. Could your meme be a source indicator for your goods or services?

Grumpy CatsIt does not happen often, but it has happened before. turned its meme into a business by selling books, shirts, posters and even Christmas decorations. The trademark holder is the family who originally took the picture of the cat and posted it online. The original trademark registration listed the goods associated with the mark Grumpy Cat as “stuffed and plush toys, action figures, dolls and toy animals, all based on a real cat that is an internet meme.”

So what about the risk of using memes?

Most creators launch their memes for the love of the meme and want people to share and tweak. But, there have been claims in the past. Getty Images, which has a reputation for strictly enforcing their intellectual property, has enforced the use of one of its images in a meme.

The Socially Awkward Penguin was a short-lived meme that was shared and people would socially awkward oengineoften change the text to include awkward sayings. The original image of the penguin came from a National Geographic photographer and Getty Images enforced their rights and demanded money from people who used the image in memes.

But what about fair use?


Fair use is the most obvious defense to a claim. The problem with fair use is that there is no bright line test and no lawyer can guarantee you that a court would find that your use of the meme was a fair use.

The fair use factors include:

(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;

(2) the nature of the copyrighted work;

(3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and

(4) the effect of the use upon the potential market for or value of the copyrighted work.

Because most memes are meant to be parodies or include critical comments in a non-commercialized way, fair use will likely save the day. If you use it in a commercial way in advertising or try to sell items using someone else’s images for Captureyour meme, then you will likely find yourself in trouble.


For the most part, internet memes are harmless fun. If you are sharing with your friends and commenting on current events, you likely don’t have much to worry about. Share the Salt Bae image to celebrate your buddy’s epic bottle flip. On the other hand, if you are using a meme to sell products, you may want to think twice.

If you created the original image that has gone viral and you want to sell products or otherwise monetize it, you may want to take the right legal steps to protect yourself.

Rocky Mountain National Park

Because of an extended working vacation away from Houston’s heat in Colorado, I’ve been away from the blog.  Like my kids gearing up to go back to school, I’m getting back to the normal work mode back in the office while recovering from a separated shoulder from a mountain biking incident (riding across on overpass in Houston is apparently different than actual mountain biking).  As a warm-up, here are a few quick links to interesting stories from the last couple of weeks.

Another Adwords Trademark Dismissal

From Professor Goldman’s Technology and Marketing Law Blog — another unsuccessful keyword advertising lawsuit.  The plaintiff was a collection agency and the defendant was a law firm that bid on the plaintiff’s name that triggered the following ad:

a link titled “Stop Collection Calls—Is Allied Interstate Calling You?” Below the link are two lines of text, the first listing Defendants’ URL,, and the second bearing the slogan “Stop the calls for free!”

Under most circumstances, I would advise clients to avoid using the competitor’s name in the ad copy.  But, this is one of those easy exceptions.  It is clear the law firm is not trying to confuse consumers into thinking the law firm is the same as the collection agency.  It is a pretty easy decision, but a good reminder of how trademark law plays into search engine advertising.

An Eraser Button for Minors on Social Media

Charlie bags his first 14’er — sort of because it was Mt. Evans and we drove most of the way.

We previously mentioned an eraser button for minors on social media.  It appears the California Legislature is also back from vacation which, according to Edwards Wildman’s Digilaw Blog, means the law may be a reality soon.

Hi-Jacked Sites

One of the most difficult things to do is help clients deal with IP theft from pirates outside of the U.S.  Seyfarth Shaw’s Trade Secret Blog provides some tips on how to deal with these issues–assuming you have enough clout to get your state attorney general involved.

Cascade Falls

Don’t let your independent contractor use your email.

Evan Brown’s Internet Cases blog discusses a recent Texas opinion regarding the dangers of letting an independent contractor use the company email.  An independent contractor cannot usually bind a company to an agreement because they don’t usually have the authority.  The company, however, can clothe the independent contractor with the indicia of authority and lead the other party to believe they are dealing with the right person.  One way to do that — have the independent contractor send emails from the company account.

Understanding the law and the government’s 

Sunrise in Grand County, Colorado

To get a good baseline understanding of the law underlying the government’s ability to (store, monitor, read, index, search – you choose the verb) / (phone records/meta data/emails/cell location information — you choose the object of the verb), NPR’s Morning Edition has a good story explaining the 1978 Supreme Court decision that may say all of this is perfectly legal.

The Tenth Circuit issued a decision yesterday in the 1-800 Contacts v. case we discussed several years ago when originally filed.   For those of you who simply want the result, the Court of Appeals ruled:

1.  There was no evidence of likelihood of confusion – an essential element to a trademark claim.

2.  The court also threw out the secondary infringement claims based on the use of the trademarked term by’s affiliate marketers because the agents, or sub-agents, lacked authority to include 1-800’s mark in ads for

3.  The court of appeals, however, sent the case back to the trial court on the one claim to determine whether was liable for contributory infringement because the evidence could support a reasonable finding that did not take reasonable steps to halt the display of 1-800’s marks in affiliate ads once it learned of such display.

The trademarked term was 1800CONTACTS. itself bid on the following nine terms (the Challenged Keywords) as AdWords keywords: “1-800 contact lenses”; “1800 contact lenses”; “800 contact lenses”; “”; “”; “”; “”; “”; and “” did not dispute that it bid on the Challenged Keywords, nor does 1-800 contend on appeal that ever bid on the 1800CONTACTS mark itself. Additionally, 1-800 did not claim that any impressions created by featured the 1800CONTACTS mark in their text.

Discovery revealed, however, that two affiliates had bid on the keyword “1800Contacts” and close variations of 1-800’s mark. And at least one of the affiliates published at least one ad for (one of’s websites) that featured the phrase “1800 Contacts” in its advertising copy.

The main claims against related to the conduct of the affiliates were based on two theories.  The first—vicarious infringement—imposes liability on a principal for the infringing acts of its agent.  The second—contributory infringement—is analogous to aiding and abetting.

The direct claim against argued there was initial interest confusion when the trademarked term triggers the ad.  Initial-interest confusion results when a consumer seeks a particular trademark holder’s product and instead is lured to the product of a competitor by the competitor’s use of the same or a similar mark.  As the name implies, the improper confusion occurs even if the consumer becomes aware of the defendant’s actual identity before purchasing the product.

The court of appeals cited’s expert report to find’s use of the nine Challenged Keywords yielded 1,626 impressions for or its associated websites over eight months. In only 25 (1.5%) of these 1,626 instances did the user click on the ad for (We do not know how many of the 25 made a purchase from The users in those 25 instances may have been confused into thinking that was affiliated with 1-800, or they may simply have wished to look at the offerings of those whom they knew to be 1-800’s competitors. What we can say, though, is that initial-interest confusion occurred at most 1.5% of the time that a ad was generated by a Challenged Keyword in those eight months. This number cannot support an inference that’s keyword activity was likely to “lure” consumers away from 1-800.

Finally, the court determined there was no evidence instructed their affiliates to the use the 1-800 mark in the ad copy.  By doing so, the agents went beyond their scope and could not be held vicariously responsible. may not have taken sufficient action, however, to stop the affiliates from using the trademarked term when notified about it and therefore, there could be a trial on the issue of contributory infringement.

What did we learn?

1.   Initial interest is becoming a difficult weapon for plaintiffs in these cases.  Professor Goldman, who will probably write about this decision soon, will be glad.  Update on 7-19-13 – he is.

2.  Don’t use the trademarked term in the copy.

3.  Instruct your affiliates on #2 and take action if you are told the affiliates have crossed the line.

4.  Finally, although I did not discuss the rejection of the plaintiff’s survey in the case, if you are going to do a survey to help show confusion, read this case and take heed.


 We haven’t discussed Google AdWord trademark cases much here lately.  For the most part, the courts had determined that using a trademark term to trigger an ad was a use in commerce.  Google has generally prevailed, however, because the trademark owners have had trouble proving consumer confusion.

The Fourth Circuit Court of Appeals may have provided trademark owners a little hope in its decision in Rosetta Stone v. Google yesterday.  Before we get to the specifics and you go off and file lawsuits against Google, know that you are probably not as famous or as well-funded as Rosetta Stone.  Most of the decision dealt with the use of the term Rosetta Stone in the text of the ads and not simply to trigger ads.  Nevertheless, the case provides some interesting thoughts on Google’s treatment of trademarks over the years and may re-open the floodgates to suits against Google.

You can read my post about the district court opinion here and here.

Pre 2004 (I know, way back then)

According to the opinion, prior to 2004, Google’s policy precluded both the use of trademarks in the text of an advertisement and the use of trademarks as keywords upon request of the trademark owner.  

In 2004

Google loosened its trademark usage policy to allow the use of third-party trademarks as keywords even over the objection of the trademark owner. Google later even introduced a trademark-specific keyword tool that suggested relevant trademarks for Google’s advertising clients to bid on as keywords. Google, however, continued to block the use of trademarks in the actual advertisement text at the request of a trademark owner. At that time, Google’s internal studies suggested the unrestricted use of trademarks in the text of an advertisement might confuse Internet users.


Finally, in 2009, Google changed its policy to permit the limited use of trademarks in advertising text in four situations:

(1) the sponsor is a reseller of a genuine trademarked product;

(2) the sponsor makes or sells component parts for a trademarked product;

(3) the sponsor offers compatible parts or goods for use with the trademarked product; or

(4) the sponsor provides information about or reviews a trademarked product.

Google’s policy shift came after it developed the technology to automatically check the linked websites to determine if the sponsor’s use of the trademark in the ad text was legitimate.  This change in policy was used against Google to show it knew there was risk in infringement, but proceeded anyway.

Rosetta Stone sued Google claiming Google’s policies concerning
the use of trademarks as keywords and in ad text created not
only a likelihood of confusion but also actual confusion as well, misleading Internet users into purchasing counterfeit software, especially since 2009.   

Basic Trademark Law

To establish trademark infringement under the Lanham Act, a plaintiff must prove: (1) that it owns a valid mark; (2) that the defendant used the mark “in commerce” and without plaintiff’s authorization; (3) that the defendant used the mark (or an imitation of it) in connection with the sale, offering for sale, distribution, or advertising” of goods or services; and (4) that the defendant’s use of the mark is likely to confuse consumers.

To determine the whether there is consumer confusion for a direct infringement claim, there is a list of nine factors courts are generally suppsoed to consider.  The trial court focused on three: (1) defendant’s intent; (2) actual confusion; and (3) the consuming public’s sophistication.

The trial court then ruled on a summary judgment that all three “disputed” factors favored Google. The court of appeals said that perhaps there were sufficient factual issues that should be determined by the jury rather than through a summary judgment.  

Google argued its burden was lessened when they used the Rosetta Stone marks  for a nominative use.  A nominative use is one in which the defendant uses the plaintiff’s trademark to identify the plaintiff’s own goods, and “makes it clear to consumers that the plaintiff, not the defendant, is the source of the trademarked product or service.”  This usually applies to comparison or review sites. 

Google argued the use of the Rosetta Stone marks in the ad text was the same — it was clear the sites were not the official Rosetta Stone sites.   Rosetta Stone countered with evidence of purchasers who believed they were purchasing Rosetta Stone software on the sites of authorized resellers, but received counterfiet programs instead.  The court determined that raised a question of whether Google used the trademarked term in a way that caused confusion as to “affiliation, connection or sponsorship.” 

In an interesting discussion about us, Google succesfully argued to the trial court it was entitled to summary judgment because Rosetta Stone users are sophisticated and should not be confused in light of the cost of the software and the type of audience interested in it.  The trial court inferred that Rosetta Stone consumers “would tend to demonstrate that they are able to distinguish between the Sponsored Links and organic results displayed on Google’s search results page.”    The court of appeals said the inference may very well be correct, but there needed to be evidence to support it and perhaps a trial to prove it.


The court rejected Google’s argument that the mark was more one of functionality.  The functionality doctrine is more commonly considered in the trade dress context.  Coca-Cola, for example, can’t get trade dress protection for a 12 ounce can because a 12 ounce aluminum can is a matter of function.  Coca-Cola can get protection in a red can with a large white mark going through it with white cursive writing.  That is a matter of trade dress and not functionality of the can.

The trial court, however, suggested Rosetta Stone, to trigger a keyword was functional.  The trial court wrote:

     The keywords . . . have an essential indexing func-
     tion because they enable Google to readily identify
     in its databases relevant information in response to
     a web user’s query . . . [T]he keywords also serve an
     advertising function that benefits consumers who
     expend the time and energy to locate particular infor-
     mation, goods, or services, and to compare prices.

The court of appeals nixed the functionality defense for search engine cases.  The court of appeals ruled functionality does not depend on how Google uses the trademark (to trigger ads), but on how the trademark owner uses it (to market language software).   

Contributory Infringement

In alarming news for Google, the court of appeals reversed the trial court’s dismissal of the contributory infringement claim.   Under contributory infringement, a manufacturer or distributor  intentionally induces another to infringe a trademark, or if it continues to supply its product to one whom it knows or has reason to know is engaging in trademark infringement, the manufacturer or distributor is contributorily responsible for any harm done as a result of the deceit.  It usually applied in the counterfeit market.

It is not enough to have general knowledge that some percentage of the purchasers of a product or service is using it to engage in infringing activities; rather, the defendant must supply its product or service to “identified individuals” that it knows or has reason to know are engaging in trademark infringement. 

Rosetta Stone argued the use of the trademark to trigger ads, a practice of which Google knew about and allowed, was sufficient to hold Google liable.  You could see how Google would be concerned about a negative ruling on this claim.   The court said that the trial court placed the burden on Rosetta Stone during the summary judgment proceedings rather than simply asking if there were fact issues that needed to be tried.  Unfortunately, for the rest of us, the court failed to state exactly what evidence Rosetta Stone presented other than its claim that triggering an ad could amount to contributory infringement.

Google does have a process that allows mark owners to complain and request the delisting of counterfeit makers.  That may be enough to ultimately prevail on this claim, but for now, a jury may have to decide this.  A similar program was sufficient for eBay to avoid a contributory claim by Tiffany’s, but that was only after a full trial.

Trademark Dilution

Finally, the court of appeals revived the federal trademark dilution claim. The Federal Trademark Dilution Act currently provides:

    [T]he owner of a famous mark . . . shall be entitled
    to an injunction against another person who . . . com-
    mences use of a mark or trade name in commerce
    that is likely to cause dilution by blurring or dilution
    by tarnishment of the famous mark, regardless of the
    presence or absence of actual or likely confusion, of
    competition, or of actual economic injury.

The court of appeals said that Rosetta Stone would need to prove its mark was famous when Google first began engaging in any allegedly diluting behavior.  If Rosetta Stone prevails, it may be entitled to an injunction.

What does it all mean?

The ruling is bad for Google, but not necessarily the end of a war.  The court of appeals simply sent the case back to the trial court allowing Rosetta Stone to prove its case — a still difficult hurdle.  As I mentioned before, most plaintiffs aren’t Rosetta Stone.  While Google will have to spend much more in legal fees to fight this and the likely copycat lawsuits, Rosetta Stone clearly invested a lot of money as well. 

Professor Goldman in his Technology and Marketing Law Blog wrote:

In this sense, the opinion reminded me of last week’s Viacom v. YouTube ruling–both opinions were soulless omnibus rulings that give superficial (but ultimately false) hope to plaintiffs while remanding the case to an almost certain defense win (just at a much higher cost).

He adds that the court of appeals was forced to fix some “cut corners” by the trial court.  By doing so, however, the court of appeals missed the big picture and only prolonged the eventual death of AdWords trademark suits.

It is clear this is a setback for Google.  The interesting part will be to see how trademark owners use this case for future suits against Google and competitors.

If you are like me and are told in March you need to do something in October, then you probably forgot by now.  That is exactly what we did when we warned you back then that you needed to take action in October to prevent your site from being associated with a .xxx pornography site.  It’s now October, so have you done it?


We are currently in what is called the “Sunrise” period which runs through October 28.  Now is the time for trademark holders to pay a one time fee to block a .xxx site from ever being registered–known as “Sunrise B”.  Read more about Sunrise B.

If you run an adult site, then you care about Sunrise B.  It is the period where you can apply for a .xxx domain name to match your existing trademark or existing top level domain name.  If you are interested in Sunrise A, you can go here

If you prefer a short video explanation, watch this:

OOPS!  I did not read this until October 29!

If you miss the deadline, it is not the end of the world.  As explained in this Domain Name Wire post, the .xxx domain space is highly regulated and includes numerous safeguards.  The $75 registration fees will also keep away many cybersquatters.

I have written numerous posts about the legalities of bidding on a competitor’s trademarked term to trigger a pay-per-click advertisement.  Today, we discuss the remedies you may be able to obtain if you are successful.  

After all, why spend a lot of money filing suit if you are going to lose a lot of money doing it?  Professor Goldman of the Technology and Marketing Law Blog feels strongly about this writing, “Most keyword ad lawsuits are not economically justified, so trademark owners are almost invariably making a bad business decision bringing them.”   

So, what exactly can a prevailing party obtain in such a suit?


Obviously, a trademark owner can get an injunction that prevents the wrongdoer from continuing.  More often than not, the offending party stops the practice with the first cease and desist letter.  If not, the injunction may be important enough to justify the cost.  But if they stop, should you still sue? 


People often start off on a case saying it’s a matter of principle and don’t care about the cost.  Then, they get the first bill, have to site through a deposition and get involved in the morass of litigation.  At that point, principles start to change.  

The damages under the Lanham Act may include the defendant’s profits, damages sustained by the plaintiff.   To determine whether to award profits, the court considers: (1) whether the defendant had the intent to confuse; (2) whether sales were actually diverted; (3) the adequacy of other remedies; (4) any unreasonable delay by the plaintiff in asserting its rights; and (5) whether this is a palming off case. If the court determines profits are appropriate, the burden shifts to the defendant to show it made no profits from the infringement. 

If you are proving your own damages, you don’t have to prove the exact amount to the penny, but you do have to show a reasonable correlation and reasonable certainty as to the amount. 

Enhanced Damages

The Lanham Act gives the trial judge discretion to award any amount in excess of the actual damages, but not to exceed three times the amount of actual damages.  Enhanced damages will be upheld in cases involving deliberate and fraudulent infringement. Often it requires knowing and intentional conduct that defendants knew their actions were illegal. Cases of innocent infringement and cases in which the defendant made efforts to prevent, and not take advantage of, confusion probably do not merit enhanced damages. If a defendant immediately takes down the offending ad or claims ignorance, it can be difficult to obtain enhanced damages.  

Attorney’s Fees

The Lanham Act claim allows for recovery of fees in “exceptional cases.”  Generally, this means there is a high degree of culpability, bad faith or fraud, or when the defendant’s infringement can be characterized as “malicious”, “fraudulent”, “deliberate” or “willful.” Such a finding must be by clear and convincing evidence. Attorney’s fees are not appropriate in cases in which the law is unclear or in which a party presents what it in good faith believes may be a legitimate defense or in which only mixed results are achieved. 

Risks to the Plaintiff

When sued, Defendants often seek to have the plaintiffs’ trademark cancelled (American Blinds, anyone?).  The USPTO may order cancellation including a registration that was: (1) obtained fraudulently; (2) has become or is generic; (3) has not acquired secondary meaning; (4) has been abandoned; or (5) has become functional.

A Case Study 

In v. Six C Consulting, Inc., 2011 WL 1113445 (N.D. Ga. March 24, 2011), both parties made golf mats. Plaintiff made one using the trademark “Dura Pro.” The defendant bid on “Dura pro” to bring up paid ads. Plaintiff notified defendant to stop. Within 48 hours, defendant instructed the marketing firm to stop. Unfortunately, the marketing firm did not do so. Plaintiff filed suit. Defendant stopped the practice soon thereafter.  Plaintiff sought an injunction, damages, costs and attorneys’ fees, as well as an accounting of defendant’s damages. The defendant conceded it violated the act so the only issue was the remedy.

 Plaintiff claimed it lost $123,784 damages by showing a reduction in sales during the time defendant engaged in the practice. The court responded: “The . . . affidavit does not provide a rational basis for awarding, or a reasonable methodology for calculating, actual damages.” Some months during the infringement period had higher sales than some months outside of the pertinent period. The average monthly sales prior to the infringement had a few outlier good months which skewed the average.

The court wrote:

Even assuming that the spreadsheet shows some unquantifiable decline in plaintiff’s sales during the infringement period, there is no evidence to suggest that the decline occurred as a result of defendant’s infringement. The . . . affidavit is not very helpful on his point, because [the affidavit] offers no reasonable basis for determining whether any decline in sales was caused by defendant’s infringement, as opposed to some other or multiple other factors. Nor could she, as she is admittedly not an expert in the market factors that could cause such a decline. Rather, [she] simply assumes a decline in sales was caused by defendant’s activities because it coincided with them. In the absence of any other evidence on damages, [her] assumption is insufficient to withstand summary judgment.

As a result, the court granted the defendant’s summary judgment as to plaintiff’s lost profit damages.

Regarding  the defendant’s profits from the infringing conduct, the court wrote:

One of the features of a PPC campaign is that it allows a seller to track how many times its website appeared as a result of a search for a keyword (called “impressions”), how many times a potential customer clicked on the seller’s website following a search (called “clicks”), and whether the customer purchased anything from the website following the search (called “conversions”). In the internet advertising industry, it is standard practice to rely on this type of search data, which is generated by search engines such as Google.

The search data from, defendant’s PPC campaign shows that during the infringement period there were 1,319 impressions resulting from searches for the term “Dura Pro.” Only 35 of those impressions resulted in a click, after which a potential customer was directed to defendant’s website, however, not one of those clicks resulted in a conversion, or a sale, of anything.

Based on this evidence, the court determined there was no evidence of defendant’s profit from the infringing conduct.

The court also denied the request for attorneys’ fees writing:

There is no evidence in the record to suggest that defendant acted In a ‘malicious, fraudulent, deliberate, or willful manner,’ While defendant admits to direct infringement of plaintiff’s mark, it credibly argues and presents substantial evidence that the infringement was unintentional. Defendant was not aware of plaintiff’s rights to the “Dura Pro” mark until it was contacted by plaintiff in January, 2009. Within 48 hours of plaintiff’s contact, defendant acted, albeit not entirely effectively, to eliminate the term “Dura Pro” from the PPC campaign.

As a resut, the plaintiff got its injunction, but nothing else.  It is not clear how much the plaintiff spent in attorney’s fees.  According to the case, the defendant shortly stopped using the ad after the suit was filed.  Was it worth it for the plaintiff?

1-800-Contacts has added another suit to its list of attempts to protect its trademarked name when competitors use the terms as part of their search advertising. According to the suit, Lensworld bid on the term “1-800-contacts” as part of its search marketing campaign. 1-800-Contacts claims it violates their trademark.

While there is not a clear answer to this issue, there is more litigation on this topic. Google has successfully fended off lawsuits from Geico and American Blinds. However, a Dallas, Texas federal judge has allowed American Airlines’ suit to proceed past the pleading stage.

1-800-Contacts has aggressively pursued this litigation and reached several settlements. Rather than fighting Google and other search engine behemoths, 1-800-Contacts is after the actual competitors. To succeed, 1-800-Contacts is going to have to show bidding on its trademarked name is a “use” in commerce of the trademarked name and that when a search query triggers competitor’s sites, it causes consumer confusion. According to Media Post’s Online Daily, 1-800-Contacts has brought several other similar cases to guard against confusion. “The worry that they have is that these advertising methods will make consumers think there’s an affiliation between these other companies and our client,” said 1-800-Contacts’ lawyer, Bryan G. Pratt according to Media Post.

A more detailed analysis of the issue can be found in the permanent article on important internet legal issues on the left side of this site.