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12|20|2008 12:58 am EDT

Vulcan vs Google Case – Plaintiffs Denied Class Certification

by Adam Strong in Categories: Legal Issues

In a case that is well over a year old, Vulcan Golf and other plaintiffs in the “Vulcan vs Google” case where handed a set back this week as the court denied their class certification.  The court’s decision can be found at this link on Docutek (pdf).  DNN caught wind of this news through Eric Goldman’s blog where he provides a summary of the the court’s decision and it’s implications.

” The court rejects class certification for the trademark infringement and Anti-Cybersquatting Consumer Protection Act claims because the individual questions of fact predominate over the common questions of law.”

Some take-aways from the court papers.  The court recognizes that ownership issues and claims to each trademark would have to be examined for every potential class member.

“Even if the court has to conduct hearings regarding ownership on even a tiny fraction of the potentially millions of registered and unregistered marks or personal names of the putative class members, such an undertaking would render proceeding as a class unmanageable. . . .

In this court’s view, the possibility of hundreds if not thousands of individual hearings related to ownership,
distinctiveness and the applicability of affirmative defenses, including managing probable discovery to be conducted prior to those hearings, precludes a finding that a class action is a
superior method of adjudicating the trademark-related claims,

The distinctiveness of a trademark is also brought up.

Caselaw on the issue of distinctiveness indicates that it is a multi-faceted, fact-specific inquiry particular to each putative mark, which includes a detailed inquiry into whether a mark is generic, descriptive, suggestive, arbitrary, or fanciful. . . .

. . . were the class to be certified, the court would be required to engage in thousands (or more) of individual inquiries as to whether a class members’ mark is distinctive.

Goldman points out that “this case reinforces the difficulty of establishing class action lawsuits to enforce trademark rights. They are possible, but so often the idiosyncrasies of each trademark preclude summary adjudication.”

This case originally involved IREIT, Dotster, Sedo and Oversee as defendants. The plaintiffs most notable addition was former baseball star Bo Jackson. For more information on the case, refer to DNN coverage  here and here and Goldman’s coverage.

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1 Comment

December 20, 2008 @ 2:03 am EDT

This is certainly a landmark case – Keeping all eyes peeled on the outcome.



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