The decision has different implications depending on who you ask.

Says Tiffany’s lawyer: “The ruling makes it almost impossible to protect marks online — makes it an undertaking which is almost always after the fact.”

Says eBay’s lawyer: “The decision didn’t upset the traditional view as to the relative allocations of burdens of ferreting out trademark infringements. It didn’t create a new a priori rule for online marketplaces.”

Says Eric Goldman: “Courts may expect service providers to provide the industrial-strength level of protection that eBay provides, but small startups can’t do that. I am concerned this case would send the wrong signal to small startups: Set up industrial-strength protections or you’ll be sued out of existence.”

The anonymous John Doe runs the Internet gripe site, www.SaleHooSucks.com, which criticizes plaintiff SaleHoo Groups, Ltd.

SaleHoo is a New Zealand limited liability company that offers a database of wholesalers and brokers of goods that can be sold on eBay, and sells memberships that authorize access to the database.

Mr. Doe’s site claims that SaleHoo threatens individuals who post unfavorable information about SaleHoo with defamation lawsuits and thus “there is no way to get true unbiased reviews of SaleHoo.” 

SaleHoo, which owns the trademark SALEHOO, filed suit in the Western District against Mr. Doe for for trademark infringement, among other claims. 

SaleHoo moved for leave to take immediate discovery, which the court granted. SaleHoo then served a subpoena on GoDaddy.com, the SaleHooSucks.com registrar, seeking to learn the registrant’s identity. GoDaddy gave notice of the subpoena to Mr. Doe, who moved to quash it.

Since Mr. Doe had notice of the subpoena and had an opportunity to be heard, the court found the controlling question was whether “SaleHoo alleged facially valid claims and produced prima facie evidence to support of the elements of these claims within its control?” The court answered the question in the negative.

“Here, the court finds that SaleHoo has not met its burden to make a prima facie showing with respect to likelihood of confusion. Doe plainly uses ‘SaleHoo’ in its domain name and throughout its website, but it is not evident how Doe’s use is confusing or whether it has caused actual confusion. The court is particularly mindful that the average Internet user is unlikely to believe that <www.salehoosucks.com> is either an official SaleHoo website or in any way sponsored or approved by SaleHoo.”

Therefore, the court granted Mr. Doe’s motion to quash the subpoena.

The case cite is SaleHoo Group, Ltd. v. ABC Company, __ F. Supp.2d __, 2010 WL 2773801, No. 10-0671 (W.D. Wash. July 12, 2010) (Robart, J.).

Seems the Fourth Circuit last month affirmed a jury’s curious finding that Mattel, Inc.’s SEE ‘N SAY and THE FARMER SAYS marks are famous and were likely to be diluted by Super Duper, Inc.’s use of SEE IT! SAY IT!, SAY AND SING, FISH AND SAY, FISH & SAY, SORT AND SAY, SORT & SAY, and SAY AND SORT marks for children’s language therapy materials.

Really? Do SEE ‘N SAY and THE FARMER SAYS really meet the statutory definition of being “widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark’s owner”? Not in my book.

Not much analysis in the (unpublished) decision, just that the Fourth Circuit wasn’t going to substitute its judgment for that of the jury.

In the court’s words, “The evidence presented at trial was sufficient for the jury to conclude that the simultaneous use of Mattel’s and Super Duper’s marks would … ‘impair[] the distinctiveness of [Mattel’s] famous marks.’”

It concluded: “[T]he jury was well situated to make the factual determination that Mattel’s marks were ‘famous,’ that sufficient similarity existed between Super Duper’s and Mattel’s marks, and that this association was likely to impair the distinctiveness of Mattel’s ‘famous’ marks. The Trademark Dilution Revision Act (‘TDRA’) requires nothing more, and we are prohibited from reweighing the evidence or drawing inferences from the facts.”

I’d be interested in learning exactly what evidence the jury was presented. I just don’t view SEE ‘N SAY and THE FARMER SAYS as being household brand names. Not by a long shot.

The case cite is Super Duper, Inc. v. Mattel, Inc., No. 09-1397 (4th Cir. June 10, 2010).

Following the order, CertainTeed moved to dismiss its remaining claims without prejudice, including its claim for damages. At the pretrial conference, the court suggested that CertainTeed dismiss its claims with prejudice, but CertainTeed declined.

On July 23, the court granted CertainTeed’s request, finding that Mr. Garcia would not suffer any legal prejudice — the sole basis on which a court can deny a motion for voluntary dismissal.

The court’s reasoning:

“The court finds no legal prejudice that would arise from CertainTeed’s voluntary dismissal of its remaining claims. Mr. Garcia would lose no legal right as a result of the dismissal, and there is no indication that the discovery from CertainTeed necessary to mount his defense would be more difficult to obtain later. Indeed, as discovery has closed in this action, Mr. Garcia has already had a complete opportunity to seek discovery in support of his defense.

“In an equitable sense, Mr. Garcia’s claim to prejudice is stronger. As Mr. Garcia made clear at the pretrial conference, this litigation has been a considerable strain on him for two years, and he would strongly prefer to put an end to it. CertainTeed, meanwhile, has shown little interest in moving beyond this dispute. Although the court cannot accurately forecast whether CertainTeed will attempt to resurrect the claims it now wishes to relinquish, CertainTeed refused at the pretrial conference to agree to a dismissal with prejudice. This suggests that it wishes to retain at least the threat of relitigation of these claims, a threat on which it might well make good.

“On the other hand, even a dismissal with prejudice would not immunize Mr. Garcia from the threat of future litigation. As the court has already discussed, the permanent injunction will remain in place. CertainTeed can pursue relief in this court if it feels that Mr. Garcia’s future conduct violates the injunction. Moreover, nothing prevents CertainTeed from filing another lawsuit if Mr. Garcia’s future conduct violates the law without violating the permanent injunction.”

The case cite is CertainTeed Corp. v. Seattle Roof Brokers, No. 09-563 (W.D. Wash. July 23, 2010) (Jones, J.).

In Masters Software, Inc. v. Discovery Communications, Inc., a software company with a trademark registration for CAKE BOSS filed suit in the Western District against the producers of the popular television show of the same name. (Previous STL post here.)

On July 16, Western District Judge Richard Jones imposed a preliminary injunction against the producers of the TV show. Among other things, the court found much actual confusion: “Confusion between these marks is not limited to casual fans. People in the baking business have assumed that [plaintiff] CakeBoss is related to [defendant] Cake Boss, as evidenced by Masters’ experiences at trade shows. Discovery and Mr. [Bartolo ‘Buddy’] Valastro [star of the show] point out that they receive many more communications than Masters from people who do not appear to be confused, but this is to be expected. Most people are unaware of CakeBoss, including most people who are fans of Cake Boss. Among those that are aware of have encountered both marks, however, there is substantial evidence of actual confusion.”

The court also found that the defendants’ intent weighed in plaintiff’s favor. “Discovery attempts to paint its intent as innocent, denying that it was aware of CakeBoss when it named Cake Boss. The court accepts that Discovery was unaware of CakeBoss at that time, but this is a far cry from evidence of innocent intent. As noted, it would have only taken a few moments on the internet for Discovery to discover that the name it was considering for its new show (and a multi-million dollar investment) was in use by Masters. If it did not know about CakeBoss, it should have.”

Based on these findings, the court found that Masters was likely to prevail on its infringement claim and that irreparable harm was presumed. Therefore, it found that Masters was entitled to a preliminary injunction.

And it’s something of a doozie.

“The court orders that, pending trial in this matter, Defendants … shall cease using the name ‘Cake Boss’ to identify the television program currently entitled Cake Boss, and in connection with the sales of merchandise related to that television program.

“With respect to the sales of related merchandise (except for DVDs of the television program), this injunction shall take effect immediately upon Masters’ posting of bond. Defendants are permitted, however, to sell any pre-existing inventory of such products.

“With respect to the television program itself, the injunction shall take effect after Masters posts bond and after Defendants complete all scheduled first-run airings of the third season of Cake Boss. Within one month following the final first-run airing of the third season, Defendants may not use the name ‘Cake Boss’ in connection with either repeat showings of any episode of any season of the television program or with any episodes in future seasons.”

The court set the bond at $10,000.

The case cite is Masters Software, Inc. v. Discovery Communications, Inc., No. 10-405 (W.D. Wash. July 16, 2010) (Jones, J.).

Beach Boy Mike Love appealed the dismissal of a derivative suit he brought on behalf of Brother Records, Inc. (“BRI”), the corporation that owns THE BEACH BOYS registered trademark, against the UK-based Sanctuary Records Group, Ltd. He also appealed the award of attorney’s fees against him.

The suit paralleled claims Mr. Love made in a direct lawsuit against Sanctuary. Sanctuary moved to dismiss Mr. Love’s claims on the ground that the related direct action had already been dismissed.

On July 8, the Ninth Circuit affirmed, in part because it found a corporation does not possess any right of publicity and in part because the cause of action did not implicate either a right of publicity or the Lanham Act since it arose in England.

“First, Love claims Sanctuary violated his own and BRI’s common law rights of publicity in the Good Vibrations promotion, by using his and The Beach Boys’s names, photographs, and likenesses to their commercial advantage without permission. In the Opinion, we held that Love’s claim was governed by English law, and English law does not recognize a right of publicity. In his district court papers, Love cited no California case that has recognized that a corporation has a right of publicity or otherwise has standing to protect the publicity rights of another. Nor did he cite any California case that has recognized that a band or group has a right to publicity. Even assuming BRI could bring a right of publicity suit on behalf of The Beach Boys, and that California somehow had an interest in the case because BRI is incorporated in California, England’s interest in this case is significantly greater.

The case cite is Love v. Brother Records, Inc., Nos. 08-55035 and 05-55973, 2010 WL 2781582 (9th Cir. July 8, 2010).

Photo Credit: Brian Peters

On July 8, it found that the burden of establishing nominative fair use does not rest with the defendant, as it previously had held. Instead, it is the plaintiff’s burden to prove the defendant’s use is not nominative fair use.

Toyota Motor Sales, U.S.A., Inc., sued independent auto brokers Farzad and Lisa Tabari for trademark infringement based on the defendants’ use of “lexus” as part of their domain names, including buy-a-lexus.com and buyorleaselexus.com.

Following a bench trial, the Central District of California found for Toyota and enjoined the defendants (who proceeded pro se) from using “Toyota” in any domain name. The defendants (still pro se) appealed to the Ninth Circuit.

After a lengthy discussion about nominative fair use, the court found the district court erred in analyzing the doctrine as an affirmative defense after Toyota had established its case of infringement. Instead, the court found that the test replaces the likelihood of confusion test.

It’s made that finding before. Here’s the wrinkle.

On remand, it found that Toyota should have the burden of establishing that defendants’ use of its mark was not nominative fair use.

“A finding of nominative fair use is a finding that the plaintiff has failed to show a likelihood of confusion as to sponsorship or endorsement. And, as the Supreme Court has unambiguously instructed, the Lanham Act always places the ‘burden of proving likelihood of confusion … on the party charging infringement.’ In this case, that party is Toyota. ‘[A]ll the [Tabaris] need[ ] to do is to leave the factfinder unpersuaded.’

“We have previously said the opposite: ‘[T]he nominative fair use defense shifts to the defendant the burden of proving no likelihood of confusion.’ But that rule is plainly inconsistent with [KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111, 118 (2004)] and has been ‘effectively overruled.’ A defendant seeking to assert nominative fair use as a defense need only show that it used the mark to refer to the trademarked good, as the Tabaris undoubtedly have here. The burden then reverts to the plaintiff to show a likelihood of confusion.”

The case cite is Toyota Motor Sales, U.S.A., Inc. v. Tabari, __ F.3d __, 2010 WL 2680891, No. 07-55344 (9th Cir. July 8, 2010).

On July 2, Preston, Wash.-based Talking Rain Beverage Co. filed suit in the Western District against Everett, Wash.-based Unique Beverage Co., LLC, for trademark infringement.

Talking Rain has registrations for ICE for water and SPARKLING ICE for soft drinks. It alleges the competing bottled water company’s registration of CASCADE ICE for water and application to register CASCADE ICE SKINNY COCKTAILS for cocktail mixes infringes Talking Rain’s trademark rights.

Unique Beverages has appeared in the case but has not yet filed an answer.

The case cite is Talking Rain Beverage Co. v. Unique Beverage Co., LLC, No. 10-1097 (W.D. Wash.).

The family-owned Mindys Cosmetics, Inc., sued its attorney for malpractice, breach of fiduciary duty, and conversion. The case concerns advice the attorney gave one of Mindys owners to register in her own name two trademarks the company formerly had owned but whose registrations had expired.

The attorney moved to strike the claims against him based on California’s anti-SLAPP statute, which protects against Strategic Lawsuits Against Public Participation. 

The Central District of California denied the lawyer’s motion. 

The lawyer appealed.

The Ninth Circuit found that filing a trademark registration constituted a “protected act,” and that the suit arises from that protected act, implicating anti-SLAPP protection.

“Each of Mindys’ causes of action arises not out of a general breach of duty, but out of [attorney Kia] Kamran’s act of filing the trademark application in [Sonya Dakar’s] name. The trademark application was not ‘incidental’ to the causes of action, but was their gravamen. But for the trademark application, Mindys would have no reason to sue Kamran. Because Mindys’ claims arose from Kamran’s act of applying to register the trademarks in Sonya’s name, they are properly subject to an anti-SLAPP motion.”

However, the court also concluded there was sufficient merit to Mindys’ claims that the suit should be allowed to proceed. For example, the court found that if Mindys’ evidence is credited, the lawyer “was at least negligent in determining who had authority to act on behalf of Mindys. Kamran admits that he took instructions to register the trademarks” from four different people, including one person Mindys argued had no authority to instruct him on behalf of the company.

For this reason, the court found “Mindys has thus made at least a minimal showing that Kamran did not ‘use such skill, prudence, and diligence as lawyers of ordinary skill and capacity commonly possess and exercise in the performance of the tasks which they undertake.’ Crediting the evidence submitted by Mindys, as we are required to do, Mindys has demonstrated a ‘reasonable probability,’ within the meaning of the anti-SLAPP statute, of prevailing on its malpractice and breach of fiduciary duty claims.”

The case cite is Mindys Cosmetics, Inc. v. Dakar, __ F.3d __, 2010 WL 2652480, No. 09-55134 (9th Cir. July 6, 2010). 

In it, he discusses his run-ins with Alaska Airlines, Air France, Dell, and Microsoft, and why the Anticybersquatting Consumer Protection Act makes for bad public policy.

Here’s some of why Mr. Temme believes he’s misunderstood:

“After the Dell disaster, I would have been quite justified to dump all the typo domains I was saving for their rightful claimants, but that would have done exactly what I wanted to prevent with my ill-fated domain-registration consulting service. I didn’t want malicious typosquatters to snatch them up.

“I had registered 24 Microsoft typo domains during my consulting experiment. Without sending me a demand letter first, Microsoft filed suit in March, demanding the 24 domains and up to $2.4 million – plus legal costs – in damages. Simultaneously, I received an offer from Microsoft to settle the case for $500,000.

“Tim Cranton, a Microsoft associate general counsel, is in charge of pursuing and suing all Internet-related criminals. He is doing a brilliant job, as is evident from the many victories of his I found on Google. Cranton identified me, Alf Temme, as a particularly egregious cyber criminal, telling seattlepi.com he wanted to make an example of me to dissuade others from typosquatting. Based on all the negative information you can find about me on Google, I think he took the right approach.

“The reality is, I am not the kind of person portrayed by all those Google results. If I were that kind of person, I certainly would not have registered all those domains with my correct contact information. I did not register them with the popular “private” registration option and I did not register them in some offshore jurisdiction like Korea, Bermuda or the Bahamas.

“So Tim Cranton must have concluded that I must be a complete idiot of a typosquatter for not taking these precautions. Most other people will decide I must be an idiot, because they cannot conceive of the possibility that I might just be an exception to the exceedingly mean and dishonest society we have created in the past 40 years.”