Seattle Trademark Lawyer

On June 29, the Ninth Circuit reversed the Central District of California’s injunction against the defendant soft drink maker in Hansen Beverage Co. v. National Beverage Corp. that had enjoined defendants from selling or marketing their FREEK line of energy drinks.

Hansen produces and markets the MONSTER ENERGY line of energy drinks, each packaged in containers bearing a large clawed-out “M” and the word “MONSTER.” Each variety uses a distinct color combination that generally consists of a dark background and one bold accent color unique to the variety.

In August 2006, National began selling its line of FREEK energy drinks in the Detroit area. Like MONSTER drinks, the FREEK line of beverages consists of four flavor varieties, each packaged in containers featuring a dark background and one of four distinctive accent colors. Unlike the MONSTER drinks, however, FREEK’s packaging prominently features the word “FREEK” written in a unique, stylized font and the distorted image of an evil-looking creature’s face.

Confusingly similar? The Subject Energy Drinks

Soon after National began distributing its product, Hansen filed suit under Section 43 of the Lanham Act, alleging that National’s FREEK line of energy drinks infringes the trade dress of Hansen’s MONSTER drinks. The Central District found National’s FREEK trade dress was indeed confusingly similar with Hansen’s MONSTER trade dress. Therefore, it granted a preliminary injunction prohibiting National from “manufacturing, distributing, shipping, advertising, marketing, promoting, selling, or offering to sell the Freek energy drinks in containers the same or similar to their current containers or any containers confusingly similar to Plaintiff’s current Monster trade dress.”

In a published decision, the Ninth Circuit found the Central District’s finding of likelihood of confusion was clearly erroneous and reversed. It concluded: “The two trade dresses are similar in overall appearance only to the extent that they both feature ‘aggressive’ graphics and bold accent colors against dark backgrounds. However, these elements are widely employed in the crowded energy drink market and are therefore, unlikely to lead to confusion as to source.”

It added: “The appearance of the competing trade dress speaks for itself. Monster products are distinguishable from the other energy drinks on the market largely because the word ‘Monster’ and a large ‘M’ are prominently  displayed on the cans. Freek’s trade dress does not feature either of these source-identifying marks; instead, it displays prominently its own trade name (‘Freek’) along with a distinctive depiction of a distorted and frightening face (the so-called ‘Freek Man’). These very significant differences weigh heavily against a finding that consumer confusion is likely to result from the overall look of the packaging.”

The court also rejected Hansen’s argument that the “Freek Man” is the picture equivalent of the word mark “MONSTER,” on the ground that the MONSTER word mark “is so broad and ambiguous that consumers are unlikely to equate it with any particular image or symbol — much less an image as disembodied and stylized as the Freek Man.”

The case cite is Hansen Beverage Co. v. Nat’l Beverage Corp., __ F.3d __, 2007 WL 1859607, No. 06-56390 (9th Cir.).

Thanks to the IP Law Observer for bringing this decision to my attention. (Read IPLO’s summary of the case here.) For some reason, I missed it myself the first time around.

On June 27, the Ninth Circuit handed down an unpublished trademark decision in Harbour v. Farquhar, which reviewed the Central District of California’s dismissal of plaintiff’s false designation of origin claims under Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23 (2003). In short, the Ninth Circuit affirmed.

Its decision is short and sweet: “Gerald Whane Harbour and Gee-Gee 100 Productions, Inc. appeal the district court’s dismissal of their claim that Kurt Farquhar and Farquhar Productions, Inc. violated the Lanham Act, 15 U.S.C. § 1125(a), by licensing Gee-Gee’s digitalized musical compositions to various television and film producers and falsely representing that Farquhar had provided the musical services, composed the music, and produced the digital goods. …

“Section 43(a) of the Lanham Act creates a federal cause of action against a person who used in commerce either ‘a false designation of origin, or any false description or representation’ in connection with ‘any goods or services.’ In Dastar, the Supreme Court grappled with the correct interpretation of this language, specifically with what the Lanham Act means by ‘origin’ of ‘goods.’ The Court ultimately held that the phrase refers to ‘the producer of the tangible goods that are offered for sale, and not to the author of any idea, concept, or communication embodied in those goods.’

“Under Dastar, the ‘goods’ at issue here were the completed television programs, or the products offered for sale to the public. Gee-Gee’s musical compositions were ‘idea[s], concept[s], or communication[s] embodied within those goods.’ Therefore, Dastar controls, and Gee-Gee fails to state a claim under the Lanham Act.”

The case cite is Harbour v. Farquhar, 2007 WL 1851927, No. 05-55693 (9th Cir.).

Topline’s getting into the spirit of suing. After settling with six of nine defendants in the infringement suit over its FLIRT trademark, Bellevue shoe maker The Topline Corp. has filed suit against another alleged infringer, this time over Topline’s REPORT trademarks. STL’s coverage of Topline’s suit against Flurt Footwear and others is available here.

Topline’s new suit, brought June 18 in the Western District against 4273371 Canada, Inc., and Modextil, Inc., jointly doing business as Report Collection, objects to the defendants’ alleged marketing and sale of a new line of women’s apparel under the marks REPORT and REPORT COLLECTION. Topline’s complaint states that defendants own a federal registration for the mark REPORT COLLECTION for men’s clothing and accessories, the application for which defendants allegedly filed after Topline’s first use of REPORT for women’s footwear.

Topline claims it has used REPORT, REPORT:, and REPORT SIGNATURE in connection with the marketing and sale of women’s footwear since as early as March 1993. It claims to own federal registrations for REPORT: for women’s shoes, REPORT for women’s and girls’ footwear, and ONE ON 1 BY REPORT for women’s and children’s fashion shoes.

Topline alleges defendants first introduced their women’s apparel line in the United States at a trade show in September 2006, and have only manufactured and sold a limited number of women’s goods in the U.S. under these marks. It also alleges that defendants have filed an opposition to Topline’s application for federal registration for the mark REPORT SEATTLE for women’s shoes.

Topline claims defendants’ use of the REPORT COLLECTION and REPORT marks in connection with the sale and marketing of women’s clothing and accessories is likely to cause confusion and thus infringes Topline’s trademarks.

Topline also has filed a motion for preliminary injunction. Defendants have not yet answered Topline’s complaint or responded to the motion.

The case cite is The Topline Corp. v. 4273371 Canada, Inc., No. 07-0938 (W.D. Wash).

On July 3, the Ninth Circuit affirmed the Northern District of California’s dismissal of Perfect 10, Inc.’s secondary trademark liability claims against Visa International Service Association and affiliated banks and data processing services.

Perfect 10 publishes the magazine “PERFECT 10” and operates the subscription Web site www.perfect10.com, which it claims features “tasteful copyrighted images of the world’s most beautiful natural models.” Perfect 10 claims copyrights in the photographs published in its magazine and on its Web site, federal registration of the PERFECT 10 trademark, and blanket publicity rights for many of the models appearing in the photographs. It alleges that numerous Web sites based in several countries have stolen its proprietary images, altered them, and illegally offered them for sale online. Instead of suing the direct infringers, Perfect 10 sued the defendant financial institutions that process credit card payments to the allegedly infringing Web sites.

In December 2004, the Northern District of California granted the defendants’ motion to dismiss plaintiff’s claims, which Perfect 10 appealed. With respect to Perfect 10’s trademark claims, the Ninth Circuit found as follows:

“To be liable for contributory trademark infringement, a defendant must have (1) ‘intentionally induced’ the primary infringer to infringe, or (2) continued to supply an infringing product to an infringer with knowledge that the infringer is mislabeling the particular product supplied. When the alleged direct infringer supplies a service rather than a product, under the second prong of the test, the court must ‘consider the extent of control exercised by the defendant over the third party’s means of infringement. For liability to attach, there must be ‘[d]irect control and monitoring of the instrumentality used by a third party to infringe the plaintiff’s mark.’”

The Ninth Circuit concluded Perfect 10 failed to plead a viable claim under either prong of the test. “First, it has not pled facts showing that Defendants ‘intentionally induced’ infringement of Perfect 10’s mark. …”

“Second, Perfect 10 has failed to allege facts sufficient to show ‘[d]irect control and monitoring of the instrumentality used by a third party to infringe the plaintiff’s mark. Perfect 10 claims that the ‘product’ or ‘instrumentality’ at issue here is the credit card payment network through which Defendants process payments for infringing material. As discussed at length above [in connection with the court’s analysis of plaintiff’s copyright claims], this network is not the instrument used to infringe Perfect 10’s trademarks; that infringement occurs without any involvement of Defendants and their payment systems. Perfect 10 has not alleged that Defendants have the power to remove infringing material from those websites or directly stop their distribution over the Internet. At most, Perfect 10 alleges that Defendants can choose to stop processing payments to these websites, and that this refusal might have the practical effect of stopping or reducing the infringing activity. This, without more, does not constitute ‘direct control.’”

The Ninth Circuit also affirmed dismissal of Perfect 10’s claim for vicarious trademark infringement because defendants’ relationship with the alleged infringers does not establish a “symbiotic” relationship or “joint ownership or control” for trademark purposes. In the Ninth Circuit’s words, “Defendants process payments to these websites and collect their usual processing fees, nothing more.”

Judge Alex Kozinski disagreed with these conclusions. In his dissent, he wrote: “Without defendants’ payment systems, the infringers would find it much harder to peddle their infringing goods.” Therefore, he found that Perfect 10 had pled facts sufficient to state a claim for contributory trademark infringement.

As for vicarious trademark infringement, Judge Kozinski wrote: “plaintiff alleges that the Stolen Content Websites cannot operate without the use of credit cards, while defendants make huge profits by processing these illegal transactions. If this is not symbiosis, what is?” Based on this finding, he found the majority also erred in absolving defendants of vicarious trademark infringement.

The case cite is Perfect 10, Inc. v. Visa Int’l Svc. Ass’n, __ F.3d __, 2007 1892885, No. 05-05170 (9th Cir.).

On June 27, Western District Judge Marsha Pechman denied the plaintiff’s unusual injunction motion in Hi-Rise Technology, Inc. v. Amatuerindex.com. Plaintiff owns a federal registration for THE AMATEUR INDEX in connection with adult entertainment Web sites. In March, plaintiff filed an in rem action against amatuerindex.com, an alleged typosquatter, seeking transfer of the domain name to plaintiff under the Anti-Cybersquatting Consumer Protection Act.

Plaintiff’s motion was unusual in that it sought a temporary restraining order requiring eNom, the domain name registrar, to “transfer the Domain to a new account with eNom for the Plaintiff and to provide the access information to Plaintiff’s counsel so that the Domain may remain under Plaintiff’s control in the new account until this action is concluded. Plaintiff furthermore prays that the temporary restraining order be automatically converted into a temporary injunction one day before it would otherwise expire and that the temporary injunction be automatically converted, after 30 days, into an order of domain forfeiture.”

The court was dubious. It found: “Plaintiff cites no authority that supports the proposition that the Court may issue a temporary restraining order that would be ‘automatically converted’ into a ‘temporary injunction,’ which in turn would be ‘automatically converted, after 30 days, into an order of domain forfeiture.’ Plaintiff appears to be seeking a temporary restraining order that would, after the passage of a certain period of time, ‘automatically’ become a final order of forfeiture without any further motion by Plaintiff or action by the Court. The Court is unaware of any statutory or case law that authorizes such an unusual procedure.”

The court went on to say: “Plaintiff’s motion also fails to analyze or even mention the standards for granting a temporary restraining order or a preliminary injunction. Indeed, Plaintiff’s motion does not include a citation to a single case. The Court is not inclined to grant the extraordinary remedy of a temporary restraining order or a preliminary injunction where a party represented by counsel fails to provide any analysis of the relevant standards granting such relief. This concern is particularly acute where, as here, Plaintiff is seeking a ‘mandatory injunction’ that seeks to compel an affirmative act, rather than a ‘prohibitory injunction’ that seeks to preserve the status quo pending trial.”

The case cite is Hi-Rise Technology, Inc. v. Amatuerindex.com, No. 07-349 (W.D. Wash.).