Seattle Trademark Lawyer

From today’s Seattle Times:

“Investigators in Mississippi say two men wrapped blocks of wood in duct tape and Bubble Wrap, attached Toshiba labels and tried to pass them off as laptops. Hinds County authorities charged the men with trademark infringement and selling goods with counterfeit labels. WLBT-TV reported the men tried to sell the fake laptops to an off-duty state trooper.”

Probably not Intel inside, either.

Fraud or theft would seem to fit these facts, but once someone affixes something that looks like a genuine trademark on a product that does not come from the source the trademark identifies, that’s counterfeiting as well.

Western District enjoins use of “Cake Boss” for TV Show

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/Appellant Mike Love

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

The Ninth Circuit tweaked its approach to the nominative fair use doctrine last week.

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).

Plaintiff’s “Sparkling Ice” and
Defendant’s “Cascade Ice” water products

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.).