In Blizzard Entertainment v. Ava Labs, Opposition No. 91285851, the Trademark Trial and Appeal Board, in a precedential decision available here, ruled against Ava’s counterclaim alleging that Blizzard had never used its pleaded registered marks or had abandoned them because Blizzard only used them in connection with the retail sale of its own goods. This didn’t qualify as trademark use, Ava argued, because it was not a service done primarily for the benefit of others and was not qualitatively different from anything necessarily done in connection with the sale of Blizzard’s goods. The Board, in discussing what constitutes a “service” under the Trademark Act and apparently seeking to clarify this issue, cited precedent that leaves the question of what primarily benefits others murky.

In Hunley v. Instagram, a 2023 9th Circuit case available here, the Court affirmed the “server test” set forth earlier in Perfect 10 v. Amazon. These cases hold that a copy of a photographic image is not “displayed,” for copyright infringement purposes, when it is not fixed in a computer’s memory but is embedded by incorporating it from the host website where it originally appeared. The Hunley court further held that the server test does not conflict with the Supreme Court case American Broadcasting Co. v. Aero, which dealt with the right of public performance, rather than display. A split in the circuits has developed over the server test; notably, the Southern District of New York has rejected it. A recent summary judgement decision and order of the U.S. District Court for the District of Utah, Great Bowery v. Best Little Sites, available here, also rejects the server test in the context of embedded photos and usefully examines its treatment in other Circuit courts.

RSVP to Join the Discussion, led by Chris Kopitzke, on August 19 at noon Pacific Time via Teams or in person. All are welcome. Please respond via email to emanzur @ socalip.com (remove the spaces which have been inserted to thwart spammers) to obtain a video conference link. This activity has been approved for one hour of CLE credit.