Seattle Trademark Lawyer

“Even if a domain name was put up innocently and used properly for years, a person is liable under 15 U.S.C. § 1125(d) if he subsequently uses the domain name with a bad faith intent to profit from the protected mark by holding the domain name for ransom.”

The Ninth Circuit decided this proposition last week in DSPT Int’l, Inc. v. Nahum.

The plaintiff is a men’s fashion designer. Its founder, Paolo Dorigo, worked with his then friend, defendant Lucky Nahum, to develop a Web site for DSPT. Eventually, their friendship soured, DSPT did not renew Mr. Nahum’s contract, and Mr. Nahum joined a competitor.

Soon thereafter, DSPT’s Web site disappeared. If a customer typed the URL into his or her browser, all he or she would find was a screen saying “All fashion related questions to be referred to Lucky Nahum at: lnahum@yahoo.com.” Mr. Nahum explained to his new boss that “he had inserted that sentence in order to get [one of DSPT’s brands] to pay him funds that were due to him.”

DSPT repeatedly but unsuccessfully asked Nahum to give its Web site back. It ultimately filed suit against Mr. Nahum in the Central District of California for cybersquatting, among other Lanham Act claims. Mr. Nahum counterclaimed for an amount he alleged was still owing him under the parties’ contract.

A jury found for DSPT on its cybersquatting claim, awarded it $152k, and denied Mr. Nahum’s counterclaim.

Mr. Nahum appealed, arguing that he only used DSPT’s mark to gain leverage over DSPT in bargaining for money he claimed he was owed. In other words, he said he did not register the domain name in bad faith; he only used DSPT’s domain name to get what he was entitled to.

The Ninth Circuit rejected his argument and affirmed the jury’s award.

“His arguments are not implausible,” the court found, “but we conclude that they are mistaken. True, the statute was intended to prevent cybersquatters from registering well-known brand names as internet domain names in order to make the trademark owners buy the ability to do business under their own names.”

It concluded that “[t]he statute, like so many, is written more broadly than what may have been the political catalyst that got it passed. As in Bosley Medical Institute v. Kremer, [3 F.3d 672, 680-81 (9th Cir. 2005)], we conclude that the words of the statute are broader than this political stimulus that led to its enactment. Though there was no evidence of anything wrong with Nahum’s registration of the domain name to himself, the evidence supported a verdict that Nahum subsequently, years later, used the domain name to get leverage for his claim for commissions. The statute says ‘registers, traffics in, or uses,’ with ‘or’ between the terms, so use alone is enough to support a verdict, even in the absence of violative registration or trafficking.” 

The case cite is DSPT Int’l, Inc. v. Nahum, __ F.3d. __, 2010 WL 4227883, No. 08-55062 (Oct. 27, 2010).

Hey, they keep me entertained, but enough’s enough.

So here’s the final installment of STL’s “infringement safari” from my trip to China. (Catch up with Part 1 and Part 2)

Today’s theme is coffee.

Here’s the logo from Seattle’s Tully’s Coffee and an admirer from Beijing:

Seattle’s Tully’s Coffee; Beijing’s Tully Coffee

Ok, law school exam time. Is it trademark infringement if a real company adopts a fictional trademark?

Here’s a Beijing mall coffee shop that’s branded itself as “Central Perk” from the late, occasionally-great, sitcom “Friends.”

This isn’t the cafe from “Friends,” but does it infringe?

So where will the next infringement safari take place? Istanbul? New Delhi? Hanoi? Tacoma?

Figuring that out’s half the fun.

I was having so much fun in China on infringement safari, I couldn’t resist a second installment.

Here are some more snaps from Xi’an: 

 The original and a fan

As mentioned yesterday, this was a from brick-and-mortar store, not a back alley market.

Not to be outdone, Nike has some fans in Xi’an as well:

Nike’s swoosh and some similar designs

Nor are these shoe companies fly-by-night. The bottom one, Li Ning, has enough financial muscle to hire Chinese superstar Yao Ming as its endorser. It’s reportedly the top Chinese athletic brand.

I wonder if it’s fashionable to call to mind the original, but with a twist.

Apart from infringement and dilution, it all may be tongue-in-cheek.

Tomorrow’s final installment: coffee shop infringement.

It’s been fun combining a little R&R with a little trademark infringement. As longtime readers will remember, STL’s been on infringement safari in Merida, Seoul, and Seattle.

This time, it was China.

These crocodile copycats come from Xi’an and Shanghai:

The presumed original (top) and four friends 

Interestingly, the presumed infringers weren’t flea market vendors. They were brick-and-mortar shops on main shopping streets.

Sure, I heard a lot of “hello, watch, bag” calls from touts, but the counterfeits I’m used to seeing in big cities in the States just weren’t as visible on the streets of China.

Or perhaps they were hidden in plain sight. 

Tomorrow’s installment: Chinese riffs on Nike and Playboy!

Settlement: TLC can continue using the “Cake Boss” name after all

I had envisioned writing a little about trademarks in China, but that will have to wait.

Back from vacation, I was greeted this morning with news that the “Cake Boss” case has settled. (See STL posts on the case here, here and here.)

Terms are unknown — at least to me — but the press says the producers of The Learning Channel’s popular television show can continue to use its “Cake Boss” name, which the Western District previously had enjoined.

The settlement undoubtedly will result in the dismissal of the case.

It also presumably resulted in money changing hands.

Masters Software brought the case in March on claim the TV show’s use infringed its registered trademark in CAKEBOSS in connection with software.

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