Friday, January 26, 2007

Google v. Stoller

Here's something that will make Google very few new enemies, and perhaps some new friends: As reported by the TTABlog, Google has sued Leo Stoller, the well-known trademark "entrepreneur," for false advertising, RICO violations (the predicate acts being state-law extortion and wire and mail fraud), and unfair competition. The complaint, 222 pages including the exhibits, is here.

I've said a couple of times in this space that there's no provision in trademark law penalizing false claims of trademark ownership, or even false claims to own a federal registration, in contrast to the rule for patents. Google has brought its claims under the Lanham Act's general prohibition of false advertising; not only does it dispute Stoller's claims to own a federal registration to the mark "Google," but its allegations also encompass Stoller's claims to own common-law rights in the mark, representations that he could license the mark, representations that he'd prevailed in numerous court cases, and representations that "99% of [his] opponents opt to settle."

The obvious question is whether Google has Lanham Act standing. If the relevant market is the market for licensing trademarks, then Google seems to be a consumer rather than a competitor. If, however, Stoller asserts rights in goods and services sufficient to give him standing to oppose Google's registrations before the PTO, is he estopped from denying competition? My guess is not; noncompetitors can be operating in categories sufficiently related to justify oppositions, besides which Stoller's oppositions have all been rejected.

Evil thought: if Google is using marks in commerce through its AdWords program, then probably they are competitors (though Google doesn't claim to be able to license marks, only to sell them as advertising keywords).

Assuming Google can get past the standing hurdle, are misrepresentations of trademark ownership misrepresentations of the "nature, characteristics or qualities" of Stoller's goods and services? The phrase has been interpreted expansively in the past, and should be here, whether we think of the relevant services as Stoller's licensing services or the relevant goods as Stoller's supposedly Google-branded products. Usually, a misrepresentation of trademark ownership would not be material, but the context here makes it so. (On the other hand, the reason it's material is that Google is the target/consumer, so we're back to the standing issue. State-law fraud/consumer protection claims might have been better under the circumstances.)

Final thought: Whatever Stoller's other characteristics, he doesn't suffer from low self-esteem. In his communications with Google, he promised that his threatened lawsuit would bring Google's stock price below $5 and would result in Google's "total destruction." Even the Author's Guild doesn't make those kind of claims about Google Book Search, and that really could be bet-the-company litigation. Did Stoller really think that his rhetoric would avail him against this ten-ton gorilla?

It will be interesting to see what happens next.

8 comments:

Anonymous said...

He is chalenging "google" is now a descriptive term. I think he is right but I doubt he will be able to win against the army of lawyers google has.

Anonymous said...

Actually, Stoller's claim was that his companies had been using "Google" as a mark since 1981 and demanded that Google pay him money. TTAB found his assertion of rights to that mark, as well as many hundreds of others, to be "baseless."

Anonymous said...

It looks like Stoller has lost already. TTABlog is reporting that the Judge in the case rejected Stoller's motions and entered a permanent injuction. Google has done a public service.

Chili said...

It's important to remember that Leo Stoller's lack of credibility--according to the courts-- "is a matter of public record." The Leo Stoller Truth Serum Blog is dedicated to exposing the REAL Leo Stoller.

The Leo Stoller Truth Serum Blog
http://stollerexposed.blog.com

Chili Palmer said...

On December 4, 2009, the United States Court of Appeals for the Seventh Circuit entered an order (1) finding that Leo Stoller had been deceptive and dismissing his appeal; (2) reinstating the Mack Bar against Stoller for at least two years; and (3) ordering that the matter be referred to the United States Attorney to consider whether Leo Stoller should be prosecuted for perjury.

The Leo Stoller Truth Serum Blog
http://stollerexposed.blog.com

Chili Palmer said...

On February 11, 2010, the Illinois Appellate Court (First District) granted an order taking judicial notice that Leo Stoller had been deceptive.

The Illinois Appellate Court, on its own motion, also ordered that Leo Stoller show cause as to why he should not be held in Contempt of Court regarding sixteen appeals. The Court also ordered Leo Stoller to show cause as to why those appeals should not be dismissed.

The Illinois Appellate Court entered the orders in view of an earlier order entered by the Seventh Circuit Court of Appeals. In that order, the Seventh Circuit Court of Appeals held that Leo Stoller had been deceptive and referred the matter to the U.S. Attorney to determine whether Leo Stoller should be prosecuted for perjury.

Chili Palmer said...

On March 15, 2010, the Appellate Court of Illinois (First Judicial District) entered an order dismissing several appeals filed by Leo Stoller. The matter came before the court on the court's own rule to show cause why Leo Stoller should not be held in contempt and the appeals dismissed.

In this order, the Appellate Court of Illinois (First Judicial District) noted that it had taken judicial notice of an order entered by the Court of Appeals for the Seventh Circuit in the matter of In re Leo D. Stoller, No. 08-4240 (7th Cir., Dec. 4. 2009). In that order, the Court of Appeals for the Seventh Circuit found that Leo Stoller had been deceptive and referred the matter to the U.S. Attorney for determination of whether Stoller should be prosecuted for perjury.

The Appellate Court of Illinois (First Judicial District) also noted that Leo Stoller had filed a response to the matter before it on February 19, 2010, and that Leo Stoller had contradicted himself in his response.

This order follows a long history of sanctions against Leo Stoller. Several courts have noted that Leo Stoller's "lack of credibility is a matter of public record."

The Leo Stoller Truth Serum Blog
http://stollerexposed.blog.com

Chili Palmer said...

U.S. DISTRICT COURT BANS LEO STOLLER

In a Memorandum Opinion and Order issued by the United States District Court for the Northern District of Illinois (Eastern Division) on April 26, 2010, Chief Judge James F. Holderman clarifies the effect of a December 4, 2009 order issed by the U.S. Court of Appeals for the Seventh Circuit regarding the filing ban imposed on Leo Stoller.

The December 4, 2009 order issued by the U.S. Court of Appeals for the Seventh Circuit banned Leo Stoller from further filings in that court– in what is commonly referred to as a ‘Mack’ bar– for engaging in deceitful behavior. The Seventh Circuit Court of Appeals ordered that the Mack bar against Leo Stoller is to remain in effect until at least December 4, 2011.

In the Opinion and Order issued by the U.S. District Court for the Northern of Illinois, the Honorable James F. Holderman notes that the Seventh Circuit ordered ”‘the clerks of all federal courts in this circuit… to return unfiled any papers submitted either directly or indirectly by [Leo] [Stoller] or on [Stoller's] behalf.’”

Therefore, the U.S. District Court reasoned, the plain language of the Seventh Circuit Court of Appeals’ Order requires that Leo Stoller be barred from initiating any new lawsuits in the Northern District of Illinois, and that the U.S. District Court for the Northern District of Illinois cannot permit Leo Stoller to litigate his claims in that court.

Read the document at: http://www.scribd.com/doc/31292372/U-S-DISTRICT-COURT-BANS-LEO-STOLLER

The Leo Stoller Truth Serum Blog
http://stollerexposed.blog.com