Category Archives: Courts

GOOGLE and Genericide

It was bound to happen that someone would take a swipe at Google, claiming that the registered trademark should be cancelled because people use the word as a verb in a “generic” and “indiscriminate” way, which constitutes “genericide.”  The Ninth Circuit Court of Appeals rejected the effort. Here is a synopsis of the Ninth Circuit’s reasoning, as posted by Justia:

“U.S. Court of Appeals for the Ninth Circuit Opinions
Elliott v. Google, Inc.
Docket: 15-15809
Opinion Date: May 16, 2017
Judge: Richard C. Tallman
Areas of Law: Intellectual Property, Internet Law, Trademark
A claim of genericness or “genericide,” where the public appropriates a trademark and uses it as a generic name for particular types of goods or services irrespective of its source, must be made with regard to a particular type of good or service. Plaintiffs petitioned for cancellation of the GOOGLE trademark under the Lanham Act, 15 U.S.C. 1064(3), based on the ground that it is generic. The Ninth Circuit affirmed the grant of summary judgment in favor of Google, Inc., holding that plaintiffs failed to recognize that a claim of genericide must always relate to a particular type of good or service, and that plaintiffs erroneously assumed that verb use automatically constitutes generic use; the district court correctly framed its inquiry as whether the primary significance of the word “google” to the relevant public was as a generic name for internet search engines or as a mark identifying the Google search engine in particular; the assumption that a majority of the public uses the verb “google” in a generic and indiscriminate sense, on its own, could not support a jury finding of genericide under the primary significance test; and plaintiffs have failed to present sufficient evidence in this case to support a jury finding that the relevant public primarily understands the word “google” as a generic name for internet search engines and not as a mark identifying the Google search engine in particular.

You can read the entire opinion here: http://cdn.ca9.uscourts.gov/…/opini…/2017/05/16/15-15809.pdf.

Eric Goldman’s analysis can be found here: http://blog.ericgoldman.org/…/google-gets-big-ninth-circuit…

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Trusts & Estates & Bad Faith Claims

Here is a synopsis from the State Bar Trusts & Estates Section of an interesting case dealing with Trusts and Estates and the Court’s equitable power to charge the costs of attorneys fees incurred in defending a claim that is unfounded and brought in bad faith:

Pizarro v. Reynoso

Filed January 18, 2017, Third District
Cite as C077594

Melissa Reynoso served as trustee of her grandfather’s trust. The trust authorized Reynoso to sell real property to her mother, Karen Bartholomew, for $100,000 below the property’s appraised value. Reynoso agreed to help Bartholomew purchase the property. Reynoso obtained a personal loan, conveyed the property to Bartholomew, and the trust received the loan proceeds. Bartholomew’s son, Anthony Pizarro, and brother, Keith Jensen, filed petitions alleging that Reynoso breached her fiduciary duties, and that the sale must be set aside as a sham. During the litigation, Bartholomew turned against Reynoso and knowingly testified falsely. The trial court denied the petitions, finding the sale was valid and Reynoso did not breach her fiduciary duties. Additionally, exercising its equitable power over trusts, the trial court charged Bartholomew’s and Jensen’s shares of the trust with Reynoso’s attorney fees and costs. To the extent their trust shares were insufficient, the trial court held Bartholomew, Jenson, and Pizarro personally liable for the fees and costs.

The appellate court affirmed in part and reversed in part. Pizarro forfeited any arguments on appeal concerning the sale because his brief lacked clarity and failed to follow appellate procedure. The court properly exercised its equitable power to charge Reynoso’s attorney fees and costs against Bartholomew’s and Jensen’s trust shares. The court has the equitable power to charge a beneficiary’s share with the trustee’s attorney fees and costs if the beneficiary, in bad faith, brings an unfounded proceeding. While Bartholomew did not bring the petition, the court had the equitable power to charge her trust share because she took an unfounded position and acted in bad faith. However, the court could not order the litigants to personally pay the attorney fees and costs because such an order is beyond the court’s equitable power over trusts.

http://www.courts.ca.gov/opinions/documents/C077594.PDF