Seattle Trademark Lawyer

On December 7, the Washington Supreme Court held that businesses owned by American Indian tribes were immune from employment discrimination laws unless the tribes had waived their sovereign immunity. See Wright v. Colville Tribal Enterprise Corp., No. 77558-3 (en banc). Writing for the majority, Justice Richard Sanders concluded that “tribal sovereign immunity protects a tribal governmental corporation unless the tribe waives or Congress abrogates immunity.” The Court expressly found this protection applied to casinos and other businesses owned by the Colville Tribe. 

Does this mean that Washington’s tribal casinos and other businesses are immune from unfair competition laws? It’s an interesting question. In College Savings Bank v. Florida Prepaid Postsecondary Education Expense Board, 131 F.3d 353, 366 (3d Cir.1997), aff’d, 527 U.S. 666 (1999), the Third Circuit recognized that the successful assertion of an immunity defense by a state that had not expressly waived its sovereign immunity was a “reasonable possibility.” Indeed, the U.S. Supreme Court on appeal found no federal jurisdiction existed for alleged Lanham Act violations by a state agency. The Washington Supreme Court’s Wright decision appears to add weight to the argument that if a tribe does not expressly waive its sovereign immunity, it is immune from suit under both the Lanham Act and the Washington State Consumer Protection Act.

The Trademark Blog reports today that New England Patriots quarterback Tom Brady has sued Yahoo! for its allegedly unauthorized use of his likeness, image and identity in its advertisements and promotions for Yahoo’s Fantasy Football program. The complaint, filed November 20 in U.S. District Court for the Central District of California by Mr. Brady’s company, TEB Capital Management, LLC, alleges that the following advertisement excerpt ran in Sports Illustrated without Mr. Brady’s permission:

Mr. Brady allegedly is featured in the top center of the ad.

This, plaintiff contends, constitutes a false endorsement under 15 U.S.C. Sec. 1125; violates California’s right of publicity statute, Cal Civ. Code Sec. 3344.1; violates Mr. Brady’s common law right of publicity; and constitutes unjust enrichment. Plaintiff also contends that Yahoo! ran banner ads on its Sports web pages featuring Mr. Brady’s likeness, image and identity without his permission. Plaintiff seeks damages, as well as a preliminary and permanent injunction. 

Mr. Brady apparently is not a rookie when it comes to his publicity rights. In 2005, he reportedly sued General Motors for using his image in two Cadillac print ads after its license to do so had expired. 

Thanks to The Smoking Gun for posting a copy of the complaint.

On December 6, Western District of Washington Judge Ricardo Martinez found that plaintiff James Childers pleaded sufficient harm felt in the United States from alleged trademark infringement to defeat defendant Sagem Morpho, Inc.’s (“SMI”) motion to dismiss for lack of subject matter jurisdiction.

Childers, d/b/a Artemis Solutions Group, filed suit against SMI and other defendants alleging that SMI’s subsidiary’s use of X-BIOCERT as a trademark in connection with biometric software is confusingly similar to plaintiff’s BIOCERT registered trademark that is also used in connection with biometric software. SMI argued in its motion that the alleged Lanham Act violations took place in France, by a French company, and not within United States commerce as required under the Lanham Act.

Judge Martinez disagreed. He wrote:

“Plaintiff insists that his claims are solely focused upon the alleged infringement in the United States and the effect the infringement has had on United States commerce. Plaintiff argues that he has presented facts to support his claims of domestic application of the Lanham Act as well. In fact, nowhere in plaintiff’s Amended Complaint, or any other of his pleadings, is there mention of facts alluding to an extraterritorial application of the Lanham Act. Thus, the Court accepts plaintiff’s characterization of his claims.”

The court separately granted co-defendant Sagem Defense Securite’s motion to dismiss for lack of personal jurisdiction.

Who knew New England was so wild? On November 28, the District of Maine denied Wild Willy’s Holding Company’s motion for preliminary injunction based on the alleged likelihood of confusion between plaintiff’s WILD WILLY’S BURGERS registered trademark used in connection with plaintiff’s Maine, Massachusetts, and New Hampshire family restaurants, and defendants’ use of WILD WILLY’S in connection with its Wild Willy’s Ale Room lounge in Maine. 

Applying the First Circuit’s multifactor test set forth in Volkswagenwerk Aktiengesellschaft v. Wheeler, 814 F.2d 812, 817 (1st Cir. 1987), the District of Maine found that despite the similarity in marks and closeness in the businesses’ proximity, the classes of prospective purchasers were different, there was no evidence of actual confusion, and there was no persuasive evidence that defendants intended to trade on the plaintiff’s goodwill. “On this record,” the court found, “there is little likelihood of confusion.”  In STL’s view, this one could have gone either way. Until trial, however, at least one New England bar can stay wild. See Wild Willy’s Holding Co., Inc. v. Palladino, No. 06-111-PC.

THE WINDSHIELD DOCTOR word mark infringes the GLASS DOCTOR word mark when used in connection with auto glass repair services, the Fourth Circuit found on November 30 in Synergistic Int’l v. Korman, No. 05-2295 (published). In so finding, the court affirmed the Eastern District of Virginia’s grant of summary judgment to Synergistic International, owner of the GLASS DOCTOR mark, but vacated the district court’s award of $142,000 in damages.

The district court’s award represented proprietor Jody Korman’s profits, less certain costs and deductions during the period of infringement. The district court stated that it had balanced the equities of the case in making the award, but did not specify the factors that it had considered, other than Korman’s net profit. The Fourth Circuit found that the district court’s failure to do so was error in light of the Lanham Act’s directive that a successful plaintiff be awarded lost profits, damages, and costs “subject to the principles of equity.” See 15 U.S.C. Sec. 1117(a). The Fourth Circuit adopted the equitable factors used in the Third and Fifth Circuits, namely:

“(1) whether the defendant had the intent to confuse or deceive, (2) whether sales have been diverted, (3) the adequacy of other remedies, (4) any unreasonable delay by the plaintiff in asserting his rights, (5) the public interest in making the misconduct unprofitable, and (6) whether it is a case of palming off.”

Korman argued that the district court specifically found that she neither acted in bad faith nor was her use of the infringing mark “malicious, fraudulent, willful or deceitful.” The Fourth Circuit concluded that a “lack of willfulness or bad faith should weigh against an award of damages being made, but does not necessarily preclude such an award.” Instead, the six-factor test should control, which the Fourth Circuit directed the district court to apply in its discretion on remand.