B. Designation of origin
The defendants removed the designation of origin from the plaintiff's software and sold it as if originating with the defendants, so the defendants' motion to dismiss fails. Singh v. Xytel Corp. (1986) 1 USPQ 2d 1741.
It is undisputed that the defendant distributed counterfeit version of the plaintiff's copyrighted software with imitations of plaintiff's trademarks, so the defendant was liable as a matter of law for false designation of origin under the Lanham Act. Microsoft Corp. v. Computer Services & Repair, Inc. (2004) 312 F.Supp. 2d 779.
A manufacturer's representative suing a consulting firm for false designation of origin and reverse passing off under the Lanham Act when the consulting firm sold software derived from the representative's proprietary system failed to state a claim for which relief could be granted. For such a claim to stand, the representative had to be the origin of the goods sold. Here, the consulting firm rather than the representative was the origin of the goods, so the false designation of origin claim did not refer to the goods sold. Bob Creeden & Associates, Ltd. v. Infosoft, Inc. (2004) 326 F.Supp.2d 876, 71 USPQ 2d 1058.
A claim of false designation of ownership under the Lanham Act failed due to the lack of evidence that the defendant personally claimed to own any of the claimant's software. North American Clearing, Inc. v. Brokerage Computer Systems (2009) 666 F.Supp.2d 1299.
A software maker's claims of copyright infringement under 17 USCS §§ 501 et seq., trademark infringement under the Lanham Act, and false designation of origin under the Lanham Act against a retailer who sold unauthorized copies were not prejudiced by the district court's reliance on unauthorized copies of the manufacturer's copyright and trademark registrations. The Court is entitled to take judicial notice of official, published registrations. Island Software & Computer Services v. Microsoft Corp. (2005) 413 F.3d 257, 75 USPQ 2d 1290.
A damage claim based on the defendant's software being derived from the plaintiff's software and marketed as originating with defendant was dismissed for lack of passing off by the defendant. Xerox Corp. v. Apple Computer, Inc. (1990) 734 F.Supp 1542, 14 USPQ 2d 1512.
The plaintiff labeled its software to indicate that it was owned by and originated from the defendant, so false designation of origin was found. Allen-Myland, Inc. v. International Business Machines Corp. (1990) 746 F.Supp. 520, 16 USPQ 2d 1817.
Claims of false designation of origin or approval were established under the Lanham Act because 1) the plaintiff registered the trademarks that were used to identify its software and services, 2) the plaintiff never consented to use of its trademarks by the defendants for counterfeit purposes, 3) the defendants used the plaintiff's trademarks to sell its counterfeits of the plaintiff's software without consent, 4) use of the plaintiff's trademarks by the defendants was likely to cause confusion, and 5) there was no dispute that the counterfeit software sold by the defendants was packaged and designed to make consumers believe the counterfeits were genuine. Microsoft Corp. v. AGA Solutions, Inc. (2008) 589 F.Supp.2d 195.
The distributions of unauthorized and infringing copies of software entitling the software maker to summary judgment under 15 USCS § 1114 also established violation of 15 USCS § 1125(a) by falsely designating the origin of the software the defendant distributed. Microsoft Corp. v. Sellers (2006) 411 F.Supp.2d 913.
C. Famous and distinctive