Seattle Trademark Lawyer

This month’s ABA Journal has an article on the Second Circuit’s Tiffany v. eBay decision limiting the auction site’s liability for its users’ trademark infringement.

The decision has different implications depending on who you ask.

Says Tiffany’s lawyer: “The ruling makes it almost impossible to protect marks online — makes it an undertaking which is almost always after the fact.”

Says eBay’s lawyer: “The decision didn’t upset the traditional view as to the relative allocations of burdens of ferreting out trademark infringements. It didn’t create a new a priori rule for online marketplaces.”

Says Eric Goldman: “Courts may expect service providers to provide the industrial-strength level of protection that eBay provides, but small startups can’t do that. I am concerned this case would send the wrong signal to small startups: Set up industrial-strength protections or you’ll be sued out of existence.”

Still anonymous: Screen shot from defendant’s Internet gripe site

The anonymous John Doe runs the Internet gripe site, www.SaleHooSucks.com, which criticizes plaintiff SaleHoo Groups, Ltd.

SaleHoo is a New Zealand limited liability company that offers a database of wholesalers and brokers of goods that can be sold on eBay, and sells memberships that authorize access to the database.

Mr. Doe’s site claims that SaleHoo threatens individuals who post unfavorable information about SaleHoo with defamation lawsuits and thus “there is no way to get true unbiased reviews of SaleHoo.” 

SaleHoo, which owns the trademark SALEHOO, filed suit in the Western District against Mr. Doe for for trademark infringement, among other claims. 

SaleHoo moved for leave to take immediate discovery, which the court granted. SaleHoo then served a subpoena on GoDaddy.com, the SaleHooSucks.com registrar, seeking to learn the registrant’s identity. GoDaddy gave notice of the subpoena to Mr. Doe, who moved to quash it.

Since Mr. Doe had notice of the subpoena and had an opportunity to be heard, the court found the controlling question was whether “SaleHoo alleged facially valid claims and produced prima facie evidence to support of the elements of these claims within its control?” The court answered the question in the negative.

“Here, the court finds that SaleHoo has not met its burden to make a prima facie showing with respect to likelihood of confusion. Doe plainly uses ‘SaleHoo’ in its domain name and throughout its website, but it is not evident how Doe’s use is confusing or whether it has caused actual confusion. The court is particularly mindful that the average Internet user is unlikely to believe that <www.salehoosucks.com> is either an official SaleHoo website or in any way sponsored or approved by SaleHoo.”

Therefore, the court granted Mr. Doe’s motion to quash the subpoena.

The case cite is SaleHoo Group, Ltd. v. ABC Company, __ F. Supp.2d __, 2010 WL 2773801, No. 10-0671 (W.D. Wash. July 12, 2010) (Robart, J.).

Heard about this one today, and I do dig dilution.

Seems the Fourth Circuit last month affirmed a jury’s curious finding that Mattel, Inc.’s SEE ‘N SAY and THE FARMER SAYS marks are famous and were likely to be diluted by Super Duper, Inc.’s use of SEE IT! SAY IT!, SAY AND SING, FISH AND SAY, FISH & SAY, SORT AND SAY, SORT & SAY, and SAY AND SORT marks for children’s language therapy materials.

Really? Do SEE ‘N SAY and THE FARMER SAYS really meet the statutory definition of being “widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark’s owner”? Not in my book.

Not much analysis in the (unpublished) decision, just that the Fourth Circuit wasn’t going to substitute its judgment for that of the jury.

In the court’s words, “The evidence presented at trial was sufficient for the jury to conclude that the simultaneous use of Mattel’s and Super Duper’s marks would … ‘impair[] the distinctiveness of [Mattel’s] famous marks.’”

It concluded: “[T]he jury was well situated to make the factual determination that Mattel’s marks were ‘famous,’ that sufficient similarity existed between Super Duper’s and Mattel’s marks, and that this association was likely to impair the distinctiveness of Mattel’s ‘famous’ marks. The Trademark Dilution Revision Act (‘TDRA’) requires nothing more, and we are prohibited from reweighing the evidence or drawing inferences from the facts.”

I’d be interested in learning exactly what evidence the jury was presented. I just don’t view SEE ‘N SAY and THE FARMER SAYS as being household brand names. Not by a long shot.

The case cite is Super Duper, Inc. v. Mattel, Inc., No. 09-1397 (4th Cir. June 10, 2010).

In CertainTeed Corp. v. Seattle Roof Brokers, shingle manufacturer CertainTeed brought suit against James Garcia, a “roof broker,” claiming he had engaged in unfair competition and violated the Washington Consumer Protection/Unfair Business Practices Act. As discussed here, on June 28, Western District Judge Richard Jones found for CertainTeed on summary judgment and imposed a permanent injunction against Mr. Garcia.

Following the order, CertainTeed moved to dismiss its remaining claims without prejudice, including its claim for damages. At the pretrial conference, the court suggested that CertainTeed dismiss its claims with prejudice, but CertainTeed declined.

On July 23, the court granted CertainTeed’s request, finding that Mr. Garcia would not suffer any legal prejudice — the sole basis on which a court can deny a motion for voluntary dismissal.

The court’s reasoning:

“The court finds no legal prejudice that would arise from CertainTeed’s voluntary dismissal of its remaining claims. Mr. Garcia would lose no legal right as a result of the dismissal, and there is no indication that the discovery from CertainTeed necessary to mount his defense would be more difficult to obtain later. Indeed, as discovery has closed in this action, Mr. Garcia has already had a complete opportunity to seek discovery in support of his defense.

“In an equitable sense, Mr. Garcia’s claim to prejudice is stronger. As Mr. Garcia made clear at the pretrial conference, this litigation has been a considerable strain on him for two years, and he would strongly prefer to put an end to it. CertainTeed, meanwhile, has shown little interest in moving beyond this dispute. Although the court cannot accurately forecast whether CertainTeed will attempt to resurrect the claims it now wishes to relinquish, CertainTeed refused at the pretrial conference to agree to a dismissal with prejudice. This suggests that it wishes to retain at least the threat of relitigation of these claims, a threat on which it might well make good.

“On the other hand, even a dismissal with prejudice would not immunize Mr. Garcia from the threat of future litigation. As the court has already discussed, the permanent injunction will remain in place. CertainTeed can pursue relief in this court if it feels that Mr. Garcia’s future conduct violates the injunction. Moreover, nothing prevents CertainTeed from filing another lawsuit if Mr. Garcia’s future conduct violates the law without violating the permanent injunction.”

The case cite is CertainTeed Corp. v. Seattle Roof Brokers, No. 09-563 (W.D. Wash. July 23, 2010) (Jones, J.).

Western District enjoins use of “Cake Boss” for TV Show

In Masters Software, Inc. v. Discovery Communications, Inc., a software company with a trademark registration for CAKE BOSS filed suit in the Western District against the producers of the popular television show of the same name. (Previous STL post here.)

On July 16, Western District Judge Richard Jones imposed a preliminary injunction against the producers of the TV show. Among other things, the court found much actual confusion: “Confusion between these marks is not limited to casual fans. People in the baking business have assumed that [plaintiff] CakeBoss is related to [defendant] Cake Boss, as evidenced by Masters’ experiences at trade shows. Discovery and Mr. [Bartolo ‘Buddy’] Valastro [star of the show] point out that they receive many more communications than Masters from people who do not appear to be confused, but this is to be expected. Most people are unaware of CakeBoss, including most people who are fans of Cake Boss. Among those that are aware of have encountered both marks, however, there is substantial evidence of actual confusion.”

The court also found that the defendants’ intent weighed in plaintiff’s favor. “Discovery attempts to paint its intent as innocent, denying that it was aware of CakeBoss when it named Cake Boss. The court accepts that Discovery was unaware of CakeBoss at that time, but this is a far cry from evidence of innocent intent. As noted, it would have only taken a few moments on the internet for Discovery to discover that the name it was considering for its new show (and a multi-million dollar investment) was in use by Masters. If it did not know about CakeBoss, it should have.”

Based on these findings, the court found that Masters was likely to prevail on its infringement claim and that irreparable harm was presumed. Therefore, it found that Masters was entitled to a preliminary injunction.

And it’s something of a doozie.

“The court orders that, pending trial in this matter, Defendants … shall cease using the name ‘Cake Boss’ to identify the television program currently entitled Cake Boss, and in connection with the sales of merchandise related to that television program.

“With respect to the sales of related merchandise (except for DVDs of the television program), this injunction shall take effect immediately upon Masters’ posting of bond. Defendants are permitted, however, to sell any pre-existing inventory of such products.

“With respect to the television program itself, the injunction shall take effect after Masters posts bond and after Defendants complete all scheduled first-run airings of the third season of Cake Boss. Within one month following the final first-run airing of the third season, Defendants may not use the name ‘Cake Boss’ in connection with either repeat showings of any episode of any season of the television program or with any episodes in future seasons.”

The court set the bond at $10,000.

The case cite is Masters Software, Inc. v. Discovery Communications, Inc., No. 10-405 (W.D. Wash. July 16, 2010) (Jones, J.).