Seattle Trademark Lawyer

On December 15, Western District of Washington Judge Ricardo Martinez granted defendant Sagem Morpho, Inc.’s motion for summary judgment dismissing plaintiff James Childers’ trademark infringement case. Seattle Trademark Lawyer reported December 6 that Judge Martinez dismissed plaintiff’s claims against co-defendant Sagem Defense Securite for lack of personal jurisdiction but refused to dismiss such claims against SMI. The action arose from SMI’s alleged infringement of plaintiff’s BIOCERT trademark through the use of X-BIOCERT on SMI’s affiliate’s website, www.xelios.com.

SMI argued in its motion and reply brief that plaintiff could not pursue his Lanham Act claims because he failed to present admissible evidence demonstrating that SMI infringed the BIOCERT mark directly or vicariously, or that it otherwise contributed to the alleged infringement of that mark.

In its opposition brief, plaintiff responded that his evidence established that X-BIOCERT and BIOCERT were sufficiently similar to justify a claim of consumer confusion. He also argued that SMI used X-BIOCERT in commerce by offering a software product called “PC Login Pro Suite 5 with X-Biocert” for sale to one of plaintiff’s employees.

Judge Martinez sided with SMI. The Court found “[t]here is no dispute that defendant did not offer to sell, or actually sell, PC Login to [plaintiff’s employee] or anyone else in the United States. Nor did defendant distribute or advertise PC Login to [plaintiff’s employee] or anyone else in the United States.” The Court also found that plaintiff failed to present any facts demonstrating that the person it communicated with about PC Login “worked for, or represented, defendant in any capacity.” Therefore, the Court concluded that “plaintiff has failed to raise a genuine issue of material fact with respect to the threshold element that defendant used the allegedly infringing trademark ‘in commerce….’”

Defendants Randolph and Renee Honkala apparently were unhappy customers of plaintiff car dealer Wendle Motors, Inc., of Spokane. Mr. Honkala allegedly purchased a Ford Mustang Shelby GT 500 convertible from Wendle and was dissatisfied with its condition. Wendle claims it took the car back and listed it for sale on eBay, which upset Mr. Honkala. Wendle’s complaint, filed in the Eastern District of Washington, alleges that Mr. Honkala, using a screen name, then “began posting false and slanderous information” about the condition of the car and his experience with Wendle on Web sites frequented by car enthusiasts. This, Wendle alleges, caused it to lose a sale on eBay, in violation of the Lanham Act and Washington’s Consumer Protection Act.

On December 11, Judge Fred Van Sickle entered a TRO restraining both plaintiff and defendants from “disseminating additional information” about each other “over the Internet, whether in the form of postings, emails, or private measures.” The Court also restrained the defendants from contacting “other potential buyers” about the vehicle.

On December 13, plaintiff moved for a preliminary injunction. Defendants’ brief opposing plaintiff’s motion is due on December 18. Judge Van Sickle is scheduled to hear the motion on December 20. Defendants have not yet answered plaintiff’s complaint.

The Neiman Marcus Group, Inc., yesterday moved for a preliminary injunction against Vancouver, Washington-based domain name registrar Dotster, Inc., for its alleged registration of “at least 34 domain names” that are confusingly similar to Neiman Marcus’s famous trademarks in violation of the Anticybersquatting Consumer Protection Act, 15 U.S.C. Sec. 1125(d). The motion, filed in the Western District of Washington, alleges that defendants Dotster, RegistrarAds, Inc., and Scott Fish collectively “operate one of the largest and most nefarious cybersquatting operations the Internet has ever seen” — one that owns registrations for the domain names neamannmarcus.com, neimanmaracus.com, neimanmarcuse.com, neimanmarcuslastchance.com, neimanmaracus.com, neimanmarcuse.com, and others. Plaintiff owners of the NEIMAN-MARCUS, NEIMAN MARCUS and BERGDORF GOODMAN marks, including Bergdorf Goodman, Inc., and NM Nevada Trust, allege that defendants host web sites at each domain name that display pop-up ads and links featuring goods or services that compete with those sold in connection with plaintiffs’ marks. Defendants denied the allegations in plaintiffs’ complaint in its July 20 answer. Defendants’ response to plaintiffs’ motion is due in January.

Evel Knievel filed suit December 8 against rapper Kanye West for a music video featuring Mr. West portraying a daredevil named “Evel Kanyevel” who attempts to jump the Snake River Canyon on a motorcycle. Mr. Knievel, whose full name is Robert Craig “Evel” Knievel, alleges that use of the name “Evel Kanyevel” infringes his EVEL KNIEVEL registered trademark; that the “Evel Kanyevel” name and “the Evel Knievel Jumpsuit” that Mr. West wears in the video dilute Mr. Knievel’s famous trademarks; that the “Evel Knievel Jumpsuit” infringes Mr. Knievel’s trade dress; and that use of the name and jumpsuit in connection with an attempted televised jump over a canyon on a motorcycle similar to Mr. Knievel’s “sky cycle” violates Mr. Knievel’s statutory right of publicity. 

Mr. Knievel’s apparent allegation in part that he, alone, may attempt to jump a canyon on a motorcycle on TV under Florida’s right of publicity statute brings to mind Alex Kozinski’s dissent in White v. Samsung Electronics America, Inc., 971 F.2d 1395 (9th Cir. 1992). In that case, the Ninth Circuit found that a print ad depicting a robot turning letters on a game show stage violated Vanna White’s common law right of publicity. Judge Kozinski believed that that decision went too far. He argued, “[t]he panel is giving White an exclusive right not in what she looks like or who she is, but in what she does for a living.” Under this standard, Judge Kozinski argued that “a monkey in a wig and gown” turning letters on a game show stage would violate Ms. White’s right of publicity. It will be interesting to see if the Middle District of Florida applies similar reasoning to Mr. Knievel’s publicity claim.

The video (sometimes after a brief commercial) is viewable here.

Western District of Washington Judge Marsha Pechman denied the parties’ stipulated protective order in A Place for Mom, Inc. v. Leonhardt, 06-0457 MJP, on December 7. In this case, the plaintiff elder care referral service alleges that after the defendant former employee’s employment terminated, the former employee forwarded calls to plaintiff’s telephone number to his new business, also a defendant, constituting a false designation of origin under the Lanham Act and an unfair and deceptive act under Washington’s Consumer Protection Act. The defendants deny the allegations. In support of their stipulated protective order, the parties jointly stated:

“Each party has confidential or proprietary documents, things and information that are protected in the normal course of business, but will likely be discoverable in this litigation. Examples of the sensitive documents and information that the parties seek to protect include the names of families and clients and information on sales, costs and profit margins. Public disclosure of such information or disclosure of sources other than those indicated in this proposed order may harm each party’s ability to compete in the marketplace or may cause embarrassment to the parties named in the confidential documents.”

Judge Pechman responded that “the Court will not sign stipulated protective orders to authorize documents to be filed under seal simply based on the fact that they were marked by the parties as confidential in the course of discovery.” Citing Local Rule CR 5(g)(1), the Court found “[t]here is a strong presumption of public access to the court’s files and records which may be overcome only on a compelling showing that the public’s right of access is outweighed by the interests of the public and the parties in protecting files, records, or documents from public view.” It added that “parties seeking an order to seal any documents must provide a specific description of particular documents or categories of documents they seek to protect ‘and a clear statement of the facts justifying a seal and overcoming the strong presumption in favor of public access’” (emphasis in original).

Judge Pechman concluded that “[t]he parties may agree on confidentiality among themselves, but when they ask that the Court be involved, they must make the requisite showing. The stipulated protective order received by the Court does not make sufficiently clear that the parties cannot seal any court filings in this matter absent a motion to do so which is granted by the Court.” This decision illustrates Washington courts’ increased reluctance to shield documents from public view merely because the parties ask it to.