Seattle Trademark Lawyer

Amici Public Citizen, the Electronic Frontier Foundation, and the Citizen Media Law Project have come the rescue of Blockshopper.com, Brian Timpone, and Edward Weinhaus in their defense against law firm Jones Day’s trademark infringement suit.

In case you haven’t heard, Jones Day filed suit over the real estate Web site’s posting photos of two Jones Day associates who were involved in real estate transactions. The Web site also mentioned the firm by name and linked to the associates’ biographies on the firm’s website.

The suit alleges trademark infringement and dilution, and seeks an injunction, damages, and attorney’s fees. (Brief additional background here; commentary here and throughout the blogosphere).

Amici make a strong case in support of the defendants’ motion to dismiss:

“In this case, plaintiff is abusing a trademark to suppress legitimate, non-infringing speech, with potentially significant implications for other online speakers. The Internet offers unprecedented opportunities for speakers and audiences to find each other and exchange valuable information about products, research, viewpoints, and other important topics. That exchange cannot happen if trademark holders can prevent others from using their marks, accurately, in the ordinary course of communication, to refer to the holders themselves. But that is precisely what Jones Day seeks to do here. Its efforts must fail.”

The brief goes on to argue:

“A large law firm with overwhelming resources seeks to use trademark law to prevent a small real estate news site from conveying accurate information about the firm and its associates. If Jones Day’s trademark theory were correct, no news site or blog could use marks to identify markholders, or links to point to further information about the markholders, without risking a lawsuit. But Jones Day is wrong. The use in question is clearly a fair use protected by the First Amendment and by the Lanham Act. Moreover, this law firm, as powerful as it may be, is hardly famous enough to deserve the extraordinary protection of the federal antidilution law. Jones Day’s federal claims are baseless and amici urge the Court to dismiss them.”

Well said. I’d be out of business (or at least out of the blogging business) if I couldn’t write a story about Microsoft, Starbucks, or Amazon.com without using those companies’ trademarks in my posts.

Let’s hope plaintiff’s over-reaching yields case law that further protects the fair use of trademarks.

Thanks to the Legal Satyricon for posting on this story.

The default judgment in Century 21 Real Estate, LLC v. Raritan Bay Realty, Ltd., illustrates that an officer can be personal liable for its employer’s trademark infringement.

All that’s needed is authorization and approval.

In Century 21, the defendant corporation entered into a franchise agreement with the plaintiff and continued to use the licensed trademarks after plaintiff terminated the agreement. Plaintiff sued the corporation and its officers; defendants did not answer; and plaintiff moved for entry of a default judgment against all of the defendants, including the officers.

Eastern District of New York Magistrate Judge James Orenstein found:

“An individual officer can be held personally liable for a corporation’s trademark infringement and unfair competition under the Lanham Act if the officer is a ‘moving, active conscious force behind [the corporation’s] infringement.’ Demonstrating that the officer ‘authorized and approved the acts of unfair competition which are the basis of the corporation’s liability is sufficient to subject the officer to personal liability.’ Moreover, a defendant’s belief that the products at issue were genuine and non-infringing is ‘irrelevant’ to the disposition of a Lanham Act claim for trademark infringement.”

In his report and recommendation, the magistrate reluctantly found that plaintiff had met this burden.

 “Century 21’s well-pleaded allegations and supporting evidence ultimately suffice to establish the personal liability of each of the individual defendants in this case for trademark infringement under the Lanham Act — although Century 21 has made arriving at that conclusion needlessly difficult. Indeed, Century 21’s default motion and accompanying submissions do not address individual liability in the context of the Lanham Act at all. Despite that significant shortcoming, a thorough review of the record compels the conclusion that each of the individual defendants was a ‘moving, active conscious force behind’ [the corporation’s] infringement.

“…. The record amply supports those allegations with respect to the individual defendants. Pursuant to the Franchise Agreement both individuals agreed personally to manage and supervise the business. The two individual defendants are [the corporation’s] only shareholders and the only corporate officers with supervisory responsibilities. That Century 21 specifically directed each of its letters regarding termination of the franchise and the defendants’ attendant obligations to [the individual defendants] is further evidence that both individuals had a direct hand in the acts of infringement at issue here.”

On Sept. 3, the Eastern District adopted the magistrate’s report and recommendation.

The moral of the story, of course, is that individual officers can’t sign off on a corporation’s trademark infringement without fear of being held to account personally for their hand in the infringement.

The case cite is Century 21 Real Estate, LLC v. Raritan Bay Realty, Ltd., 2008 WL 4190955 (E.D.N.Y.), No. 07-1455 (Orenstein, M.J.).

The local press is loving the restaurant trade dress war that’s being played out this week in King County Superior Court. The case pits the owners of Peso’s against the owners of the Matador in what could be a Seattle re-telling of Two Pesos v. Taco Cabana.

Viewed another way, it’s Queen Anne versus Ballard! Now that’s a grudge match a long time in coming.

The Seattle Weekly’s Daily Weekly blog has blow-by-blow courtroom drama from Tuesday, and the Seattle Post-Intelligencer devotes a column to the fracas.

Not to be outdone, STL has posted stories here, here, and here.

STL’s next post on the subject? The winner! The loser! The drama!

This case is too meaty to let go. So here’s one last bite — a rundown on how the District of Oregon analyzed the dilution claim in Adidas America, Inc. v. Payless Shoesource, Inc.

The unhappy Payless moved for a new trial based in part on its claim that the Trademark Dilution Revision Act and its predecessor, the Federal Trademark Dilution Act, both require the defendant to use a trademark to blur or tarnish the plaintiff’s famous trademark. Payless argued it did no such thing, since the two and four stripes it put on shoes were solely for decoration — not to indicate source — so the jury’s finding that Payless had diluted Adidas’ three-stripe mark was not supported in the law.

Indeed, the court apparently found that Payless puts stripes on its shoes “merely for decoration and not as a brand or trademark.”

However, the court disagreed with the importance of this fact. On Sept. 12, it found: 

“Payless’ argument that its subjective intent to use stripes as mere decoration, rather than as a trademark, controls whether its use of stripes falls within the scope of the TDRA is supported by neither the case law nor the policy underlying federal dilution law. The TDRA provides, in relevant part, that ‘the owner of a famous mark … shall be entitled to an injunction against another person who, at any time after the owner’s mark has become famous, commences use of a mark or trade name in commerce that is likely to cause dilution … of the famous mark.’ 15 U.S.C. § 1125(c)(1).

“Dilution is the lessening of the capacity of a famous mark to identify and distinguish goods or services of the owner of the famous mark such that the strong identification value of the owner’s trademark whittles away or is gradually attenuated as a result of its use by another.’ Horphag Research Ltd. v. Garcia, 475 F.3d 1029, 1035 (9th Cir. 2007).

“As adidas notes, I have rejected Payless’ present argument more than once. I agree with adidas that the important issue is whether consumers perceive Payless’ use of two and four stripes as a trademark so that the value of the mark to adidas is diluted. This can occur even if Payless does not put a nickel into promoting the stripes as its own trademark. Although Horphag does not address the issue directly, Payless’ argument is undercut by Horphag because the court found that the famous mark was diluted by the competitor, even though the competitor did not use the famous mark as its own mark.”

Creative argument on Payless’ part, but I’ve got to agree with the court. Why should it matter what the defendant intended? What would seem to count is the detrimental impact the defendant had on the plaintiff’s famous mark.

The case cite is Adidas America, Inc. v. Payless Shoesource, Inc., No. 01-1655 (King, J.).

A Thurston County Superior Court jury yesterday found in favor of spiritual teacher JZ Knight and against her former student, Whitewind Weaver, local newspapers report.

Ms. Knight, founder of the Ramtha School of Enlightenment in Yelm, Wash. (pictured left), sued Ms. Weaver (right) for the $10,388 her company, the Art of Life Coaching, Inc., received teaching a spiritual seminar in 2006.

Ms. Knight claimed Ms. Weaver had breached her contract with the Ramtha School that she would not use what she learned for financial gain.

Ms. Weaver lost a counterclaim against Ms. Knight for unfair competition.

Her attorneys complained that an order in limine preventing the parties from using the words “trademark” and “copyright” hurt her ability to prove her case.

Ms. Knight claims in her teachings to channel “Ramtha,” a 35,000 year-old warrior spirit.

Ms. Knight succeeded in arguing that Ms. Weaver, who had taken 12 classes at the Ramtha School, copied her teachings. The jury made that determination in part by comparing video clips of Ramtha School seminars compared with clips of Ms. Weaver’s seminar.

Local press accounts provide more information about the trial (here, here, and here).