Seattle Trademark Lawyer

In January, Lifestyle Lift Holding, Inc., filed suit in the Eastern District of Michigan against Seattle-based Realself, Inc. Lifestyle licenses its registered LIFESTYLE LIFT trademark to cosmetic and plastic surgery centers. Realself owns the www.RealSelf.com Web site it describes as an “independent health and beauty community for consumers to engage in an authentic conversation about ‘anti-aging’ product and treatments.”

Lifestyle alleges that Realself’s Web site contains a link that takes viewers to a page that “purports to be an information page about ‘Lifestyle Lift,’” and another labeled “Michigan Lifestyle Lift” that takes viewers to a page listing physicians who are not affiliated with Lifestyle Lift. Lifestyle also alleges that Realself’s Web site contains pages with Lifestyle’s LIFESTYLE LIFT trademark in the “title, metaname/description, and metaname/ keywords” sections of those pages’ HTML code. This, Lifestyle alleges, constitutes trademark infringement, unfair competition, and violations of Michigan’s unfair competition statutes.

Today, Realself filed its answer, denying Lifestyle’s allegations, and counterclaiming for breach of contract, unfair competition, and violation of Michigan’s Consumer Protection Act. In particular, Realself alleges that Lifestyle and its employees or agents have “posed as patients of Lifestyle Lift on www.realself.com, and have posted numerous comments on www.realself.com purporting to be consumers of the procedure and other procedures performed by Lifestyle Lift facilities.” These comments, Realself alleges, falsely “praise, recommend, and describe positive experiences with the Lifestyle Lift procedure and often contradict the testimonials posted by other, real users of the www.realself.com site” in violation of the site’s terms of use.

The case cite is Lifestyle Lift Holdings, Inc. v. Realself, Inc., (E.D. Mich.).

STL readers may remember the patent infringement and false advertising case of Baden Sports, Inc. v. Kabushiki Kaisha Molten and Molten U.S.A., Inc., that went to trial in the Western District last August. The jury awarded Baden more than $8 million to compensate it for Molten’s intentionally falsely advertising that its basketballs were “innovative technology that is proprietary to Molten.” (STL’s posts on the case here, here and here.)

Following the jury’s verdict, Molten moved for judgment as a matter of law on the ground that Baden’s false advertising claim as presented to the jury should be vacated because the claim is barred by the Supreme Court’s decision in Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23 (2003).

On Jan. 28, Judge Marsha Pechman denied the motion. Explaining the decision, the court stated: “Dastar held that a false advertising claim under § 43 of the Lanham Act cannot be based on inventorship or ownership of a product. In its order granting in part and denying in part Molten’s motion for summary judgment on Baden’s Lanham Act claims, the Court concluded that Dastar does not bar Plaintiff’s false advertising claim based on Molten’s advertising that its product or technology is ‘innovative’ because ‘whether something is ‘innovative’ does not turn on who owns or offers a product.’ ‘[A]ny advertising indicating that Molten’s ‘Dual Cushion Technology’ is ‘innovative’ or new relates, not to the inventor of Molten’s basketball technology, but to the ‘nature, characteristics, [or] qualities’ of the basketballs themselves.’ Molten argues that despite the Court’s ruling, Baden presented evidence at trial that confirms that its Lanham Act claim is merely an inventorship claim, i.e., a claim that Molten falsely advertised its dual cushion technology as its own, rather than Baden’s invention.”

“The Court instructed the jury regarding Baden’s Lanham Act claim in a series of instructions. In its ‘Unfair Competition’ instruction, the Court explained that ‘Baden Sports claims Molten Corp. and Molten USA advertised their ‘dual cushion’ basketballs as a Molten innovation and they were not. The Court also instructed that to prevail on their false advertising claim, Baden must prove that ‘in advertisements, defendants made false statements of fact about their own product….”

“Several witnesses testified that Molten falsely advertised its ‘dual cushion technology’ as a Molten innovation. Although some of that testimony indicates that the witnesses believed that Molten’s advertising was false because Baden actually created the patented design, not Molten, other testimony makes clear that the witnesses believed the advertising was false because Molten’s product was not ‘new.’ The fact that witnesses used Baden’s prior design as evidence to show that Molten’s product was not innovative or new does not mean that Baden was actually basing its false advertising claim on the allegation that ‘Molten didn’t make it, we did.’ The Court concludes that Baden’s false advertising claim, as presented to the jury, does not run afoul of Dastar.”

The case cite is Baden Sports, Inc. v. Kabushiki Kaisha Molten, 2008 WL 238593, No. 06-210 (W.D. Wash. Jan. 28, 2008).

On Aug. 1, the Western District granted in part and denied in part defendants’ motion to limit plaintiff’s damages expert testimony in Baden Sports, Inc. v. Molten. The case turns on Molten’s sale of “dual-cushion technology” basketballs, which Baden claims infringes its patent and constitutes unfair competition. STL previously wrote about the case here. The 43(B)log wrote about the case here. 

Molten moved in limine to limit Baden’s expert testimony under Rule 37(c), which prevents a party from offering at trial evidence it failed to disclose in an expert report as required by Rule 26(a)(2)(B) or in a supplemental disclosure under Rule 26(e)(1). Trial is scheduled to begin tomorrow.

With regard to expert Scott Hamilton, Judge Marsha Pechman found that preclusion of certain testimony was proper. Mr. Hamilton’s report stated that Baden had asked him to assess damages from Molten’s alleged patent infringement, unfair competition and other claims as stated in Baden’s Third Amended Complaint. In his report, Mr. Hamilton stated he did not calculate the royalty rate that would compensate Baden for Molten’s alleged patent infringement because Molten had not yet provided copies of its financial statements and other data he needed to make the calculation. Thereafter, Molten supplemented its sales numbers and deposed Mr. Hamilton. Baden sought leave to allow Mr. Hampton to provide a supplemental report in which he would apply his previously-disclosed methodology to the numbers provided after his original report.

The court found his failure to promptly supplement his report violated disclosure rules. As the court explained: “Although Defendants provided all necessary information by April 25, Mr. Hampton has not yet provided a supplemental report. Under Federal Rule 26(e)(1), Baden was required to supplement Mr. Hampton’s disclosure no later than June 25, 2007. This delay of over three months is not justifiable. Once Molten produced additional disclosures in April, Badden should have promptly supplemented Mr. Hampton’s expert report. Badden’s offer to allow Molten to depose Mr. Hampton again, now six days before the start of trial, does not remedy the prejudice created by this late disclosure.” Therefore, the court limited Mr. Hampton’s testimony at trial to the information and opinions he expressed in his report and during his deposition.

Molten also sought to preclude Mr. Hamilton’s and fellow expert Richard Yalch’s opinions on the basis that neither expert’s report provided an opinion that Molten’s payments to the International Basketball Federation (known as FIBA) served as a measure of Baden’s Lanham Act damages. The court, however, found that both experts had indeed raised in their reports and depositions the theory of using Molten’s payments to FIBA as a proxy for the benefit that Molten received for wrongfully advertising “dual cushion technology.” Given this disclosure, the court found both experts could express such opinions at trial, though it limited their testimony to the information and opinions they previously had disclosed. 

The case cite is Baden Sports, Inc. v. Molten, 2007 WL 2220215, No. 06-210 (W.D. Wash.).

On April 4, the Western District granted defendant True Value Co.’s motion to dismiss plaintiff MEECO Manufacturing Co., Inc.’s state unfair competition claim based on Copyright Act preemption.

MEECO manufactures and distributes fireplace and stove products bearing MEECO’S RED DEVIL word and design marks. MEECO alleges that True Value is not authorized or licensed to sell MEECO-branded products, but True Value uses and displays images of MEECO-branded products in its electronic catalog. MEECO asserts, however, that when a True Value store owner or other user of True Value’s catalog orders a MEECO-branded product, True Value substitutes a competing product from Imperial Manufacturing Group. MEECO contends that True Value’s substitution of MEECO products has continued even after receiving a cease-and-desist letter, and after MEECO had prevailed in a trademark infringement suit against Imperial.

The Copyright Act preempts a claim if: “(1) the work at issue comes within the subject matter of copyright as described in 17 U.S.C. §§ 102 and 103; and (2) the rights granted under the state law are equivalent to the rights contained in 17 U.S.C. § 106, ‘which articulates the exclusive rights of copyright holders.’” See Laws v. Sony Music Entm’t, Inc., 448 F.3d 1134, 1137-38 (9th Cir. 2006).

The court found MEECO’s unfair competition claim met the first element of this test because the work at issue, MEECO’s labels and logo, come within the subject matter of copyright because MEECO has copyright registrations for its product labels, which include MEECO’s logo.

True Value argued that MEECO’s unfair competition claim did not add “an extra element that ‘transforms the nature of the action’ to anything other than a Copyright Act claim.” The court agreed. It noted MEECO’s unfair competition claim seeks an injunction barring True Value from “displaying MEECO-branded products.” It also noted MEECO’s copyright claim “similarly seeks injunctive relief because defendant ‘displayed the MEECO-branded product images,’ which ‘constitute[s] copyright infringement under the Copyright Act.’”

Based on these findings, Western District Judge Robert Lasnik dismissed MEECO’s unfair competition claim without prejudice. The court concluded: “Where, as here, an unfair competition claim is based upon the premise that defendant misappropriated plaintiff’s copyrighted material it is considered to be ‘part and parcel of the copyright claim’ and preemption is appropriate.”

The court also dismissed MEECO’s unjust enrichment claim for similar reasons.

Today’s post is a mix of trademark developments. First, King County today unveiled its new logo, changing from its longstanding “castle” and “crown” designs to the silhouette of the late Martin Luther King, Jr. This is a great way to honor a great man. The only thing giving me pause is something I heard early this morning on the radio. Maybe it was daylight savings time messing with me, but I thought I heard the reporter say the County predicted Dr. King’s family would be happy with the tribute. Wait a second. Tell me someone got the family’s permission before it appropriated Dr. King’s likeness. Imagine if the family didn’t approve. It’s doubtful, but it would be a debacle.

Also today, the 43(B)log discussed the Western District’s refusal to dismiss the plaintiff’s geographic misdescriptiveness claim in Baden Sports, Inc. v. Kabushiki Kaisha Molten, et al., No. 06-0210, 2007 WL 703394 (W.D. Wash.). In this case, which STL discussed in a different context in January, the plaintiff asserted that defendant’s failure to affix a country of origin mark onto its basketballs constituted unfair competition. Judge Marsha Pechman agreed that failing to do so is actionable under the Lanham Act. But the court could not determine on the briefs whether the failure was chargeable to the defendant or a non-party distributor. The
43(B)log’s analysis is available here.

Next, I couldn’t pass up TMBrandingCap’s link to an article entitled, “How the Band Protects Its Brand: The Use of Trademarks to Protect and Promote the Musical Artist.” Having recently posted on the subject (here, here, and here), I can say this is an article I wish I had written. It’s the first of a two-part series. Suffice it to say, I’m looking forward to part two.

Finally, I learned today that Washington’s Consumer Protection Act won’t be amended in this legislative session. Apparently, SB-5815, which would have increased to $50,000 the amount of exemplary damages available to plaintiffs proving unfair competition, ran out of time this weekend and won’t be pursued. STL’s discussion of the bill is available here.