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Specht v Google Inc.

Case No. 11-3317 (C.A. 7, Apr. 4, 2014)

During the dot-com boom of the 1990s, Erich Specht founded Android Data Corporation, and registered the “Android Data” trademark. The company ceased principal operations in 2002, but the Android Data mark remained registered to it. Five years later, Google Inc. rolled out its new Android operating system for mobile phones. Specht responded with this suit against Google, alleging primarily that, by releasing the Android operating system, Google had infringed on his Android Data mark. Google counterclaimed that Specht had abandoned the mark after 2002, forfeiting his ability to assert any rights to it. Because we agree with the district court that the undisputed evidence in the record establishes that Specht abandoned the mark, we affirm the district court’s grant of summary judgment to Google.

Background



Inspired by the recent success of a number of technology start-ups, Erich Specht decided in 1998 to enter the business world himself. He designed a suite of e-commerce software and formed Android Data Corporation (ADC), through which he intended to license the software to clients. ADC also performed a number of other web-based services to clients, including website hosting and design, and computer consulting services. Two years later, Specht applied to register the trademark “Android Data” with the United States Patent and Trademark Office. The application was approved in 2002.

Despite the trademark’s approval, by the end of 2002 ADC stopped major operations. That year, the company lost five clients, prompting Specht to lay off his only employee, cancel ADC’s internet service contract, and move the business into his home. Signifying the end of ADC’s life, he transferred all of ADC’s assets, including its software and the registered “Android Data” mark, to another of his wholly-owned companies, The Android’s Dungeon, Incorporated (ADI). Specht spent all of the next year unsuccessfully seeking a buyer for ADC’s assets. As ADC was idle, he also shut off its phone line that year.
 

 

Judge(s): Ilana Rovner
Jurisdiction: U.S. Court of Appeals, Seventh Circuit
Related Categories: Trademark
 
Circuit Court Judge(s)
Ilana Rovner
Diane Sykes
John Tinder

 
Trial Court Judge(s)
Harry Leinenweber

 

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Click the maroon box above for a formatted PDF of the decision.
android mark because google released its operating system a trademark’s registration, the district court here cited 15 first specht notes that he attempted to sell his business’s and their “legal representatives, predecessors, successors, and no. 11-3317 7 although 15 u.s.c. § 1119 grants courts the authority to cancel many, to whom, or why. adc’s assets, including its software and the registered expenses from 2003 on adc’s 2002 balance sheet precisely indianapolis colts, inc. v. metro. baltimore football club ltd. no. 11-3317 9 those sites appeared in 2005. but the district court reasonably infrastructure, inc. v. teunissen, 131 f.3d 1210, 1214 (7th cir. continuedto host adc’swebsite awhilelongerandconducted the few times specht used the android data mark after 2002 with respect to specht’s discontinued use of the mark, the year. in april 2009, he used the mark once again when he have standing to sue. but the lanham act transfers standing to android operating system in november 2007. with the mark screenshots of certain client websites as they supposedly business is different from trading on the goodwill of a trade- court. googlechallenged the admissibility of a slew of specht’s without retaining control over how developers or mobile- rebutted with evidence excusing the nonuse or demonstrating f.3d 8, 20 (d.c. cir. 2008). the district court, therefore, cor- of the mark. but these two efforts were isolated and not 2 no. 11-3317 219, 221 (7th cir. 1988). specht’s argument that google is not before we proceed we must address appellate jurisdiction. assured of our authority to resolve this appeal, we turn to the android, inc., and the open handset alliance (an industry time he could no longer be reached at his associated email 2001), google’s representation suffices to make the district ing services. two years later, specht applied to register the that the site averaged 2,925 monthly visitors (actually the reliability of the archive service from which the screenshots licensing is an argument about google’s rights against licens- registered the “android data” trademark. the company world himself. he designed a suite of e-commerce software 1992); aktieselskabet af 21. november 2001 v. fame jeans inc., 525 4 no. 11-3317 v. doebler, 442 f.3d 812, 823–24 (3d cir. 2006), specht’s argu- specht first attacks the district court’s dismissal of him and for the seventh circuit court improperly took judicial notice of newsarticlesreflecting catalog companies, specht sent out a mass mailing in decem- google counterclaimed that specht had abandoned the mark adi, only adi has standing to claim that the android data finally, specht argues that the district court improperly summary judgment motion. he contests the exclusion of the become known as the android operating system for smart first publicly-available smartphone to run android. ever since android applications before the finished product appeared on sites asserted from memory that the screenshots reflected how mark, we affirm the district court’s grant of summary judg- see tmt n. amer. v. magic touch gmbh, 124 f.3d 876, 885 (7th required more than memory, which is fallible; it required to the suit who succeeded on a significant legal issue in the he made no other use of “android data” in 2007 or the next group corp. v. bce emergis corp., 269 f.3d 800, 801–02 (7th cir. issued google’s requested declaration, and canceled specht’s plaintiffs-appellants, november 2007. but the fact that google first released a and formed android data corporation (adc), through which it is waived. see frey corp. v. city of peoria, ill., 735 f.3d 505, 509 is the best course.” central mfg., 492 f.3d at 883. the district court to cancel the plaintiff’s mark. argument. first, he raises it for the first time on appeal, and so summary judgment. see crest hill land development, llc v. ordinarily would dismiss this appeal for lack of finality as the as such, the website was not a use in commerce. specht’s reply we see a number of flaws with specht’s “naked license” been registered by a third party. he also assigned the android of its android software. this release, in november 2007, via testimony of witness with personal knowledge of how rulings that the district court made before ruling on google’s locked horns over what evidence was properly before the 10 no. 11-3317 google. no claim could be stated against android, inc.’s internet archive works). specht also argues that the district 8 no. 11-3317 registration. § 1127. a prima facie showing of abandonment may be they were not properly authenticated. see fed. r. evid. 901. including website hosting and design, and computer consult- former clients from 2005, bearing the android data mark. the end of 2002. for a violation of illinois’s deceptive trade practices act, see 1194–95 (11th cir. 2001) (release of software to end users is use start-ups, erich specht decided in 1998 to enter the business authentication by someone with personal knowledge of mark to sell a business’s goods or services and therefore does alleging primarily that, by releasing the android operating an intent to resume use. see sands, taylor & wood co. v. quaker ment to google. see zazu designs v. l’oreal, s.a., 979 f.2d 499, 503 (7th cir. inspired by the recent success of a number of technology the android mark. google tried in november 2007 to register no. 11-3317 13 court’s entry of judgment appealable under 28 u.s.c. § 1291. in his complaint the information from the press releases. android data mark after 2002, but they are insufficient. sented that it was willing to dismiss those claims with preju- uninterrupted and continuous. that is enough to warrant alliance was dismissed because it does not exist as a distinct and trademark office. the district court’s citation to the google filed a number of cross-claims that it later dismissed did not demonstrate continued use or intent to resume use of not constitute a useof the mark in commerce. see electro source, no. 11-3317 3 that only adi had standing to assert infringement. google resume using theandroiddatamark by december 2007, again with the procedural issues resolved, we finally reach the essentially shut down after losing five clients, laying off its one shown to be invalid, cancellation is not merely appropriate, it mark has been infringed. 6 no. 11-3317 rectly determined that specht had abandoned the mark at the the company’s url (androiddata.com) lapse in 2005, at which owned mark, see eva’s bridal ltd. v. halanick enters., inc., 639 1990s, erich specht founded android data corporation, and 2008). but specht did not identify any goods or services adc under a license from google, t-mobile us, inc., released the rolled out its new android operating system for mobile relevant to this appeal. first, it sought a declaration that specht constitute a bona fide use in commerce. see generally n. am. the decision on summary judgment. specht also brought evidentiary objections of his own. as allowed software developers to populate the marketplace for sustained; sporadic attempts to solicit business are not a “use citing his mass mailing. but by then it was too late. specht had which it asked. the order granting costs to google was proper. provision of services. see 15 u.s.c. § 1127; united drug co. v. no sales. second, two months later, specht attempted to license appeal from the united states district court for the adc no longer owned the android data mark, the court ruled for adc’s assets. as adc was idle, he also shut off its phone operating system in 2007. see 15 u.s.c. § 1127; central mfg., inc. 2000). second, because a naked licensor abandons an already- mark in commerce in november 2007. by then, the android fuels, inc., 190 f.3d 775, 776–77 (7th cir. 1999), and first health android mark, a position that undercuts specht’s claim to be version of theandroidsoftware innovember 2007wasalleged line that year. awarded costs because the judgment was silent about whether affirmed. intellectual property when it later released the android planetary motion, inc. v. techsplosion, inc., 261 f.3d 1188, bell, inc. v. farah mfg. co., inc., 508 f.2d 1260, 1265 (5th cir. that it did so in november 2007. specht concedes the point, but he intended to license the software to clients. adc also the mark. because specht therefore had forfeited any rights he 129–30 (2d cir. 2009); n. am. med. corp., 522 f.3d at 1218–19. android data mark, but the record does not disclose how in commerce even though no sale was made). v. years shall be prima facie evidence of abandonment,”15u.s.c. even if we put these flaws aside, specht’s argument does 1975) (“even a single use in trade may sustain trademark rights argument is frivolous. a judgment silent about costs is a releases from november 2007 about the android operating if followed by continuous commercial utilization”); see also suit. see king v. ill. state bd. of elections, 410 f.3d 404, 414 & n.10 phones. specht responded with this suit against google, trademark office. the application was approved in 2002. december. trademark infringement, see 15 u.s.c. § 1114(1), and one for against the world. its use since november 2007 has been shows that the “android data” trademark was abandoned appeal, citing the likelihood of confusion with specht’s trademark registrants, defining that termto includeregistrants mark remained registered to it. five years later, google inc. 815 ilcs 510/2, and two claims for common-law trademark evidence. relevant to this appeal, google challenged specht’s cir. 1997) (“abandonment … result[s] in the loss of trademark violations. place of the registrant in all respects”). since that party is now defense to specht’s lanhamact claims.)second, google asked both the registrants (specht and adc) and the assignee (adi) word “android” in commerce, and the evidence is undisputed record shows only 808 monthly visits), goes nowhere because specht had submitted an identical screenshot and had alleged unfair competition, see id. § 1125(a). they also advance a claim contested screenshots were from an internet archive service. bancorp, llc v. societe des bains de mer et du cercle des estrang- mark, the date google began using the android mark in ruling was correct. the lanham act grants standing to only the current owner of the mark can claim infringement. (whom we will, except where necessary, refer to simply as by adopting the abandoned mark first, google became the llc v. brandess-kalt-aetna grp., inc., 458 f.3d 931, 938 n.5 (9th in 2007, about five years after he first began to wind down answered the surviving allegations, raising two counterclaims the public domain, and may be appropriated anew. see ers a manaco, 329 f.3d 359, 364 (4th cir. 2003). phones. google purchased android, inc., in 2005. two years v. brett, 492 f.3d 876, 881 (7th cir. 2007). a trademark is correctly granted summary judgment on all of specht’s claims. despite the trademark’s approval, by the end of 2002 adc “android, incorporated” began developing what would mark lay abandoned. once a mark is abandoned, it returns to see gaia techs, inc. v. reconversion techs., inc., 93 f.3d 774, 780 address. specht passed out business cards in 2005 bearing the 12 no. 11-3317 med. corp. v. axiom worldwide, inc., 522 f.3d 1211 (11th cir. evidence in the record establishes that specht abandoned the attempts to submit screenshots from webpages of specht’s resumption of use. specht points out that adc’s website was no. 11-3317 11 commerce and acquired rights to it, and the date (if any) that might have to the mark, the district court ruled that all of background specht intended to resume use of the mark. we discuss each in to cancel the mark. and cancellation in this case was proper. adc as plaintiffs in the trademark infringement claim, but the incorrect statutory provision does not invalidate its authority they were not liable for google’s actions. the open handset no. 11-3317 the district court dismissed all of the defendants except senior user, entitled to assert rights to the android mark adc’s operations, specht attempted to revive the use of the had abandoned the mark, depriving him and his companies of under these principles, this appeal turns on three dates: the “android data” mark, to another of his wholly-owned “where, as here, a registrant’s asserted rights to a mark are consortium created to foster innovation in mobile phone adc’sinternet servicecontract, and move the businessinto his merits. it found that specht had abandoned the mark in 2002; after 2002, forfeiting his ability to assert any rights to it. district court canceled his mark without the authority to do so. the holder of that right. third, an argument about naked abandoned if its “use in commerce” has been discontinued states, 58 f.3d 1194, 1199 n.8 (7th cir. 1995). performed a number of other web-based services to clients, a mobile phone. about a year after android’s beta release, after google moved for summary judgment, the parties resurrected his website, albeit with a slightly different url specht, adc, and adi sued google, the founders of of the passion, holy cross province v. touche, ross & co., 854 f.2d assets in 2003 and 2004. but an effort to sell the assets of a were retrieved. see united states v. bansal, 663 f.3d 634, 667–68 home. signifying the end of adc’s life, he transferred all of his use of the android data mark in his mail mailing that f.3d 788, 790 (7th cir. 2011); doebler’s pennsylvania hybrids, inc. turn. with the visits. finally, specht maintains that his two sales years of nonuse. itc ltd. v. punchgini, inc., 482 f.3d 135, 149 n.9 transfer. (c.c.p.a. 1958) (“the assignee of a registration stands in the two final matters remain. first, specht argues that the technology) over the use of the android mark. the plaintiffs ceased principal operations in 2002, but the android data argues that google never acquired any lasting right to the mark office denied that application and google’s subsequent erich specht, et al., ber 2007withtheandroiddatamark. thesemailingsgarnered abandoned the mark by the end of 2002, and more than three oats co., 978 f.2d 947, 955 (7th cir. 1992). but the intent to relevant here, he objected to google’s screenshots of specht’s clients, prompting specht to lay off his only employee, cancel no. 11-3317 5 employee, and transferring its assets to adi. specht cites to specht’s claims failed as a matter of law. the district court also android data mark. resume use in commerce must be formulated within the three cir. 2006). second, specht observes that adc’s phone service the losing party was to bear the costs of the litigation. this dice. under authority such as jtc petroleum co. v. piasa motor litigation on those dismissed claims has not come to a conclu- trademark protection. see zazu designs, 979 f.2d at 503; blue “android” as its own trademark, but the patent and trade- furthermore, the use must pertain to the sale of goods or after 2002, specht’s business activities were limited. he after 2002, he either resumed using or developed an intent to no. 09 c 2572 — harry d. leinenweber, judge. that the screenshots are admissible because the creators of the argued april 2, 2012— decided april 4, 2014 not address the district court’s sound conclusion that google four activities that he believes show his continued use of the specht’ssecondprocedural challenge concernsevidentiary occurred about a month before specht had attempted to revive defendant-appellee. rovner, circuit judge. during the dot-com boom of the legal entity. the district court also dismissed specht and adc northern district of illinois, eastern division. trademark “android data” with the united states patent and city of joliet, 396 f.3d 801, 805 (7th cir. 2005); keller v. united specht spentallofthe next year unsuccessfully seeking abuyer an affidavit describing the reliability of the archive service, merits, first addressing two procedural rulings that preceded assigns.” 15 u.s.c. § 1127. specht argues that, because the before rovner, sykes, and tinder, circuit judges. because we agree with the district court that the undisputed definition of “registrant” in the lanham act is conjunctive, assignees, even if that party is not the registrant, to ensure that the prevailing party lacks any merit. google is the only party founders, the court explained, because as corporate officers some hosting services for others. but he let the registration for meanwhile, during the years that specht struggledwith his with no intent to resume use. 15 u.s.c. § 1127; rust env’t & ees, and licensees are not an issue in this case. rearden commerce, inc., 683 f.3d 1190, 1204 (9th cir. 2012); int’l years had passed before google publicized its release of the analysis sion in the district court. but at oral argument google repre- system, google had infringed on his android data mark. evidence is conclusive that specht ceased using the android as plaintiffs from the infringement claim; since specht and in specht’s complaint. that allegation is binding on specht at couldhaveprovidedthroughor inconnection with thewebsite judgment allowing costs to the prevailing party. congregation software to a healthcare firm) are evidence of commercial use became the senior user of the android mark when it used the that brings us to the question of when google first used the after 2002. if specht abandoned and never resumed use of the hefurnishedno evidence of anycommercialinterestassociated mark, then google could not have infringed on specht’s permanently abandoned by november 2007, specht could not u.s.c. § 1064, which authorizes similar action by the patent the district court excluded these screenshots because, without some later point. because these claims might be renewed, we in the evidentiaryissuesresolved,the district court addressedthe after 2002. cf. rescuecom corp. v. google inc., 562 f.3d 123, (android-data.com) because his previous url had by then reclaim it the following month. the district court therefore united states court of appeals central issue of this appeal—whether the undisputed evidence the remaining two activities are also insufficient to show a without prejudice, permitting it to reinstate those claims at ment presupposes that google had an enforceable right to the them a so-called “naked license.” google’s beta release of android in november 2007 data mark at the end of 2002. that is the year that adc theodore rectanus co., 248 u.s. 90, 97 (1918); rearden llc v. companies, the android’s dungeon, incorporated (adi). own website from august 2010 and to two of google’s press p’ship, 34 f.3d 410, 412 (7th cir. 1994); itc ltd., 482 f.3d at 147. was not canceled until 2003. but specht included any phone operating until 2005, and a website that bears a trademark may (7th cir. 2013); perry v. sullivan, 207 f.3d 379, 383 (7th cir. date (if any) that specht discontinued using the android data data mark to adi, retroactive to the december 2002 asset (7th cir. 2005). indeed, google was awarded all the relief for after the purchase, google released to the public a beta version (fed. cir. 1996); gillette co. v. kempel, 254 f.2d 402, 404 “specht”) raise two claims under the lanham act: one for android’s beta release, google has continuously been using plc v. philip morris, inc., 899 f.2d 1575, 1581 (fed. cir. 1990). (3d cir. 2011) (screenshots from internet archive authenticated rights against the world”). (2d cir. 2007); imperial tobacco ltd., assignee of imperial group efforts in 2007 (the mass mailing and his failed bid to license google inc., phone companies like t-mobile could use the software, giving google’s assertion that it first used “android” in commerce in 1997). under the lanham act, “[n]onuse for 3 consecutive appeared in 2005, bearing the android data mark. he argues because, in his view, adc did not operate in 2003. specht replies that, even if he had abandoned the mark shrinking business, another technology start-up calling itself android data mark. first, to promote his software suite to his software to a healthcare consulting firm, also to no avail. stopped major operations. that year, the company lost five any rights to it. (this claim also functions as an affirmative in commerce” meriting the protection of the lanham act. system.but thedistrict court overruledboth objectionsbecause


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