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LimitNone v. Google, Inc., (Cook County Ct. Jun. 24, 2008).
Last week, LimitNone, a Chicago company, sued Google for trade secret misappropriation seek $1B. LimitNone alleged that Google entered a nondisclosure agreement with LimitNone to review LimitNone’s gMove software — software that helps Microsoft Outlook users migrate data to the Google platform. Google allegedly assured LimitNone that it would not offer a competing product, but after receiving LimitNone’s trade secrets and promoting the $19 gMove software, Google began offering a free, competing software package which allegedly used LimitNone’s trade secrets. LimitNone filed a speaking complaint, for example:
With gMove priced at $19 per copy and Google’s prediction that there were potentially 50 million users, Google deprived LimitNone of a $950m opportunity by offering Google’s competitive product for free as a part of its ‘premier’ Google Apps package
This appears to be an interesting and potentially significant case. I will keep my eye on it and update you as opinions and events occur. For more on the filing, check out:
* Chicago Tribune
* Slashdot
* Tech Report
* ZDNet
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Continue Reading Chicago Company LimitNone Sues Google

When Google introduced its Google Patents, it revolutionized online (read “free”) patent searching. But I always had one complaint. When I use Google Patents, my goal is usually getting a either a pdf or a hard copy (which I usually obtain by printing a pdf) of the patent. Google Patents gives you that, but it takes too many steps.
Rolf Claessen of IP Newsflash (a German patent attorney and partner with v. Kreisler Selting Werner in Cologne, Germany), recently emailed me about his new Free Patent PDF Download tool that solves my one, relatively minor, Google Patents complaint. Enter your patent number (after free registration, that is) hit enter and get your pdf. Also, Claessen’s tool uses the espacenet database, so its coverage is substantially more than just US patents.
Patent Retriever is another new and free download service that allows you to download US, European and PCT patent and published applications as PDF files (no registration required).
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Continue Reading New (& Free) Patent Download Tools

Vulcan Golf, LLC v. Google Inc., No. 07 C 3371, 2008 WL 818346 (N.D. Ill. Mar. 20, 2008) (Manning, J.).
Judge Manning granted in part the defendants’ Fed. R. Civ. P. 12(b)(6) motion to dismiss plaintiffs’ RICO, Lanham Act and related state law claims. Plaintiffs alleged that the “parking defendants” – entities that allegedly register common misspellings of domain names – worked together and conspired with defendant Google to populate the misspelled domains with revenue-generating advertising related to the actual web sites’ business.*
Anticybersquatting Consumer Protection Act (“ACPA”)
The Court denied the Parking Defendants motion to dismiss plaintiffs’ ACPA claims. While plaintiffs did not allege that the Parking Defendants were the registrants of the domains at issue, they did allege that the Parking Defendants registered, owned, and controlled the sites. Furthermore, the Court would not rule on the factual issue of whether the domains – for example, vulcangolf.com and vulcanogolf.com – were confusingly similar to plaintiffs’ marks.
The Court denied Google’s motion to dismiss because while Google did not register or own the domains at issue, it was sufficient that they allegedly “trafficked” in them by working in concert with the other defendants.
Trademark Infringement
The Court upheld plaintiffs’ trademark infringement claims. It was sufficient that plaintiffs had trademarks covering their own domain names, they were not required to have marks covering defendants’ misspelled domains. Additionally, the Court could not rule upon Parking Defendants’ arguments that they did not use the marks. The complaint alleged use, and determining whether Parking Defendants’ particular acts constituted use would require reliance upon facts outside the complaint.
Google argued that it should be dismissed because it was, at most, an innocent infringer and it had already agreed to permanently exclude all allegedly infringing domains identified by plaintiffs. Because the only remedy against an innocent infringer was an injunction, which Google had already agreed to, Google argued should be dismissed. The Court, however, did not dismiss the trademark claims against Google because dismissal would have required reliance upon facts outside of the complaint. The Court denied the motions to dismiss plaintiffs’ false designation of origin claims for the same reasons the trademark infringement claims were not dismissed.
Trademark Dilution
Defendants argued that the dilution claims must be dismissed because plaintiffs’ marks were not famous. But because plaintiffs pled fame and because fame is a question of fact, the Court did not dismiss the claims.
* This post only addresses the IP aspects of the opinion, but the opinion also considers RICO and state law issues.
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Continue Reading IP & RICO Claims Collide in Domain Registration Suit

Several unrelated legal stories that are worth a read:
An excellent Illinois Business Law Journal article regarding whether Google is losing its trademark to genericide. It concludes that Google’s mark is relatively safe, partly because Google’s trademark is identical to its domain name.*
Patent Troll Tracker has been unmasked. The unmasking was based, at least in part, on Ray Niro’s bounty for Troll Tracker’s name. As would be expected, Troll Tracker unmasked himself with class and a sense of humor. He is taking a few weeks off from blogging to decide whether to continue. I hope he decides to continue. Troll Tracker is a powerful voice on some complex issues, and he is right that it is great to see another inhouse legal blogger. Plus, it would be a shame for Troll Tracker to disappear just after Ron Coleman finally discovered him.
Blawg Review #148 is up at Blawg IT. In addition to the usual links to law blog posts, Brett helps us smell the electronic roses with numerous non-legal video clips.
* Hat tip to Michael Atkins at the Seattle Trademark Blog for pointing out the article during his Trademark Dilution Weekend.
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Continue Reading IP News Roundup

Illinois Computer Research, LLC v. Google Inc., No. 07 C 5081 (N.D. Ill.) (Pallmeyer, J.).
Judge Pallmeyer is presiding over this case, which began as a standard case of a patent holding company, Illinois Computer Research (“ICR”) suing a large defendant, in this case Google, for patent infringement. The complaint was a standard three page notice pleading complaint alleging that Google infringed ICR’s patents based upon its Book Search functionality – click here for the original complaint. But the case quickly morphed into a dispute between a law firm, Fish & Richardson (“Fish”), and its former partner, the inventor and former owner of the patents in suit Scott Harris. ICR amended its complaint adding Fish and turning it in to a speaking complaint alleging that Fish forced Harris to resign because of the suit against Google and seeking a declaratory judgment that Harris, not Fish, owned the patent in suit – click here for the amended complaint.
Fish answered the amended complaint – click here for the answer – and filed speaking counterclaims alleging that Harris breached his partnership contract and fiduciary duties, and seeking a declaratory judgment that Fish owned the patents – click here for the counterclaims. Harris responded with his own speaking counterclaims alleging tortious interference and defamation – click here for Harris’s counterclaims and click here for Fish’s answer. Shortly after Fish’s second answer, Google was voluntarily dismissed with prejudice, but the case regarding Harris and Fish continued.
Fish filed a motion for expedited discovery, which the Court granted in court, without an opinion detailing the discovery allowed. Fish also filed a Fed. R. Civ. P. 12(c) motion for judgment on the pleadings seeking to dismiss plaintiffs’ tortious interference and defamation claims. That motion has been briefed, but not decided yet. And last week, Fish filed a motion to amend its counterclaims and third-party complaint naming six additional entities – click here for the motion. The motion does not identify the new parties specifically except to say that some are unnamed Doe defendants and that they are all related or believed to be related to Harris’s and ICR’s law firm Niro Scavone. Fish appears to be making a Propat-style argument that some or all of the additional defendants have or had an interest in the patent in suit and, therefore, are necessary parties. I will cover these opinions as they come out, but in light of all of the coverage this case has been getting – for example, see this recent Troll Tracker post and this case timeline at Joe Mullin’s The Prior Art Blog which Mullin promises to update periodically – I thought readers would be interested in some detailed background of the case. More to come as the Court issues opinions.
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Continue Reading ICR v. Fish & Richardson: Patent Infringement Gets Personal

The Chicago Tribune has had a few IP-related articles this week. First, the Tribune reported – click here for the story — that the House is about to take up a bill that would allow an abbreviated approval process for generic versions of biotech drugs, commonly known as biosimilars or biogenerics, similar to abbreviated new drug applications. The Senate Health, Education, Labor and Pensions Committee approved a similar bill in June, called the Biologics Price Competition and Innovation Act of 2007.
Second, the Tribune reported – click here for the story – about a new book, “The Telephone Gambit: Chasing Alexander Graham Bell’s Secret,” by Seth Shulman — which argues that Alexander Graham Bell, one of America’s most famous patentees, stole his most famous invention, the telephone, from his rival Elisha Gray. And Shulman argues that he was aided by attorneys and a corrupt patent examiner. The book is due out January 7. It looks like it could be an interesting read.
Third, the Tribune reported – click here for the story — that the Federal Circuit reversed in part the Western District of Wisconsin’s April 2007 decision which held that Google’s AutoLink and AdSense feature did not infringe HyperPhrase’s patents. The Court upheld Judge Shabaz’s decision that AdSense did not infringe the patents and remanded the case for further proceedings regarding whether the AutoLink feature infringed two of the patents in suit. Click here for a copy of the Federal Circuit decision.
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Continue Reading Tribune on Patents

The Chicago Tribune ran a story on the front page of Wednesday’s Business section about the use of trademarks in keyword internet advertising: Trademark Battlefield. The story discussed various efforts to stop internet search engines (like those offered by Google, Yahoo and Microsoft) from selling trademarked terms as search keywords. For example, the story suggested that State Farm, an insurance company, may have purchased the name of its chief competitor, Allstate, from Google. As a result, if you google “Allstate” Allstate’s websites will come up first in the search results, but in the upper right corner of the search results page, you will see a State Farm add.
The story also discussed comments from a Google trademark lawyer, Rose Hagan, during a standing-room-only panel at the International Trademark Association’s (“INTA”) meeting on Monday, which was held in Chicago. Hagan said that Google sells advertising space, not trademarks. The story also notes that Utah has passed a law which prohibited the use of a competitor’s trademarks as advertising keywords. For more on the Utah law, check out Eric Goldman’s Technology & Marketing Law Blog. The Utah law and the various lawsuits against Google, Yahoo and Microsoft on this issue are all evidence that this is a very unsettled area of trademark law. A Yahoo attorney, Laura Hauck Covington, explained that “[w]e’re all trying to find the right, reasonable balance for the owners of trademarks, consumers and advertisers.”
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Continue Reading Keyword Advertising Discussed at INTA

International Profit Assocs., Inc. v. Paisola, 461 F. Supp.2d 672 (N.D. Ill. Nov. 14, 2006) (Bucklo, J.).

Judge Bucklo held that plaintiff was likely to succeed on its Lanham Act and cyberpiracy or cybersquatter, 15 U.S.C. Section 1125(d), claims and issued a temporary restraining order ("TRO") preventing defendants from conduct that likely infringed plaintiff’s trademarks.  Based upon the cyberpiracy claim, Defendants were ordered to stop making content available through their website, www.ipaopinion.com, which was likely confusingly similar to plaintiff’s site, www.ipaopinions.com.  The Court also ordered defendants to stop using plaintiff’s trademarks as search terms in Google’s Adwords program.  Continue Reading Using Trademarked Terms As Internet Advertising Keywords Violates the Lanham Act

Bill Patry has just published Patry on Copyright — a seven volume treatise on copyright law and the first new copyright treatise in seventeen years according to Patry.  Patry spent seven years working on his nearly 6,000 page treatise and brings a distinguished background to the subject.  He is currently Google, Inc.’s Senior Copyright Counsel, he was…