Seattle Trademark Lawyer

In 2006, Microsoft Corp. brought suit in the Northern District of Georgia against Silver Star Micro, Inc., and its principal, Chase Campbell, for trademark and copyright infringement. On Jan. 6, Judge William Duffey, Jr., granted in large part Microsoft’s motion for summary judgment and imposed a permanent injunction against the defendants.

The court found in April 2005, Silver Star Micro, doing business as USA Tech Store on the Internet at www.techusastore.com, sold a counterfeit copy of MICROSOFT SQL SERVER 2000. Microsoft notified defendants that it had purchased improperly sold Microsoft software and demanded that defendants cease further infringing activity.

In September 2005, law enforcement executed on a search warrant at defendants’ premises and seized disks containing counterfeit copies of MICROSOFT OFFICE 97, MICROSOFT WINDOWS XP PROFESSIONAL, 72 counterfeit Microsoft Product Key labels and 300 units of Microsoft Volume License Media.

In December 2005 and on three occasions in March 2006, defendants sold WINDOWS XP PROFESSIONAL CD-ROMs with counterfeit product key labels and counterfeit product keys.

On summary judgment, the court found: “Microsoft’s trademarks are associated worldwide with Microsoft products, and there is little doubt that the Defendants sold infringing software with the intent that its customers believe the software was authorized by Microsoft. ‘Where, as here, one produces counterfeit goods in an attempt to capitalize upon the popularity of, and demand for, another’s product, there is a presumption of a likelihood of confusion.’ Polo Fashions, Inc. v. Craftex, Inc., 816 F.2d 145, 148 (4th Cir. 1987). Like in Polo Fashions, confusion is presumed here, and the Court grants summary judgment to Microsoft of trademark infringement on Nos. 1,200,236, 1,872,264, 1,815,350, and 2,744,843.

“Plaintiff has not, however, shown infringement of its trademarks related exclusively to the Microsoft Office 97 suite of programs. The Lanham Act and appellate precedent require that a defendant must use a mark ‘in commerce’ to be liable for trademark infringement. The undisputed facts in this case show that the Defendants possessed an infringing copy of Microsoft Office 97. The facts of this case do not show that the Defendants used the marks related to Microsoft Office 97 in any sort of commercial transaction. In the absence of evidence showing the ‘in commerce’ requirement, the Court denies summary judgment of trademark infringement and false designation of origin as to Trademark Registration Nos. 1,475,795 (‘POWERPOINT’), 1,741,086 (‘MICROSOFT ACCESS’), and 2,188,125 (‘OUTLOOK’).

The court awarded Microsoft $30,000 for each of the nine copyrights infringed, plus $25,000 for each of the four trademarks infringed, for total of $370,000. The court also found this was an “exceptional” case under the Lanham Act, entitling Microsoft to an award of its attorneys’ fees and costs.

Finally, the court entered a permanent injunction against the defendants, enjoining them from copying, selling, or making any other infringing use of Microsoft products.

The case cite is Microsoft Corp. v. Silver Star Micro, Inc., No. 06-1350 (N.D. Ga. Jan. 9, 2008).

On Dec. 28, Seattle-based Summit Capital Group, LLC, and affiliated financial services companies filed suit in the Western District against the Boston-based Summit Partners, LP, venture capital firm, seeking a declaration of non-infringement and non-dilution of the defendant’s SUMMIT PARTNERS trademark.

The complaint states: “Plaintiffs or its affiliates have done business under the tradename SUMMIT CAPITAL PARTNERS since at least 1986. One or more of the Plaintiffs registered the tradename, SUMMIT CAPITAL PARTNERS, with the Washington State corporate registry in 1996 and has used that tradename continuously, without interruption, ever since.”

The complaint further states that defendant sent plaintiffs a letter in Sept. 2007 claiming that plaintiffs’ use of SUMMIT CAPITAL PARTNERS infringes upon and dilutes defendant’s rights in several trademarks and trade names. The letter, which plaintiffs attached to their complaint, specifies that defendant claims that SUMMIT CAPITAL PARTNERS is confusingly similar to defendant’s SUMMIT PARTNERS, SUMMIT CAPITAL PARTNERS, and SUMMIT PARTNERS VENTURE FUND names and marks. 

Defendant’s letter claims a first-use date of 1984.

Defendant has not yet filed its answer.

The case cite is Summit Capital Group, LLC v. Summit Partners, LP, No. 07-2082 (W.D. Wash.).

STL readers will recall that the Wailers rock and roll band from Tacoma brought suit in June against the Wailers reggae band from Jamaica for trademark infringement, dilution, unfair competition, and cybersquatting, based on plaintiffs’ WAILERS registered trademark. Yesterday, Western District Judge Ronald Leighton found that plaintiffs filed their suit after the analogous statute of limitations had expired and, therefore, granted summary judgment in favor of defendants based on laches.

The court found: “Defendants stress that Plaintiffs were aware Defendants were calling themselves the ‘Wailers’ since the mid to late 1970s, when they were asked about their relationship to Bob Marley. Plaintiffs argue, without legal or logical support, that there is some meaningful difference between the names ‘Wailers’ (standing alone) and ‘Wailers’ in the context of ‘Bob Marley and the Wailers.’ They claim their 1970s-vintage knowledge of Defendants’ use of the term was only in conjunction with Mr. Marley, and that that use was not offending.

“In making this argument, however, Plaintiffs also concede that they ‘first encountered the Defendants’ band name as simply the ‘Wailers’ at some point in the late 1990s,’ and that they were unaware the Defendants were calling their group the ‘Wailers’ until the late 1990s.

“As the Defendants point out, however, the Plaintiffs’ registration efforts do not eliminate the rights of the Defendants: Neither application for nor registration of a mark at the federal level wipes out the prior, non-registered, common law rights of others. Accordingly, the act of registration does not toll the limitations period, and the Plaintiffs’ 2007 lawsuit to enforce the rights they claim to have obtained by registration is outside the three year limitations period. The presumption of laches applies.”

The court found the defendants could not overcome that presumption.

The court also found that defendant band leader Aston Barrett’s registration of wailers.com was protected by the Anticybersquatting Consumer Protection Act’s “safe harbor” provision for persons who believe and had reasonable grounds to believe that the use of the domain name was fair use or otherwise lawful:

“Defendants argue that Barrett’s longstanding use of the name Wailers establishes his ‘abundant good faith’ in registering the domain name. Plaintiffs argue that the issue is one of fact, and that they have not conducted discovery into the matter.

“No amount of discovery is going to change the fact that Defendants have been calling themselves the Wailers for decades, the Plaintiffs knew it, and the domain name registration predated the Plaintiffs’ application for trademark registration. There is no evidence of bad faith on the Defendant’s part, and the Plaintiffs’ Cybersquatting claim must fail as a matter of law.”

The case cite is Ormsby v. Barrett, No. 07-5305 (W.D. Wash. Jan. 2, 2008).

Note: my partner, Kathleen Petrich, and I represented the defendants. As a rule, I do not comment about cases in which I am involved until a judgment is rendered. My previous posts about this case pre-dated my involvement in the matter.

The Ninth Circuit yesterday clarified what it takes for the owner of a federally registered trademark to succeed in an infringement action against another user of the mark in connection with goods or services that are different than those specified in the owner’s trademark registration.

Applied Information Sciences Corp. owns the registered trademark SMARTSEARCH for certain computer-related functions, and claimed that eBay, Inc. uses the same SMARTSEARCH mark for its Internet auction Web site, which AIS contended will cause confusion with its own SMARTSEARCH product. The Central District of California disagreed, and granted summary judgment to eBay.

The Ninth Circuit questioned the Central District’s reasoning, but affirmed the decision since AIS failed to produce any admissible evidence tending to show a likelihood of confusion. The Ninth Circuit found:

“[A] plaintiff trademark owner must establish a valid, protectable interest in order to proceed to the second prong of the trademark infringement analysis — the likelihood of confusion resulting from the defendant’s alleged infringing use. Having established a protectable interest by proving it is the owner of a registered trademark, the owner does not additionally have to show that the defendant’s allegedly confusing use involves the same goods or services listed in the registration.

“The district court here found that AIS’s registration was limited to ‘computer software and instruction manuals sold together which allow the user to retrieve information from online services via a phone line’ in various ‘fields.’ The district court, however, then concluded that because AIS’s federal registration did not include eBay’s use of the mark as ‘a hyperlink for its web-based trading service,’ AIS’s infringement action failed for lack of a protectable interest.”

This, the Ninth Circuit found, was based on a misreading of Levi Strauss & Co. v. Blue Bell, Inc., 778 F.2d 1352, 1354 (9th Cir. 1985):

“Our refusal to allow Levi Strauss to rely on its federal registration stemmed from the way in which Strauss pled its case. Strauss was attempting to extend its own use of its registered mark to goods not specified in its federal registration. Its federally registered trademark was limited to pants pocket tabs, but its trademark infringement claim was based on an alleged trademark in clothing pocket tabs generally. … Where, however, a plaintiff bases its trademark infringement claim upon the confusion the defendant’s use will create for the plaintiff’s use of its mark in connection with its own registered goods or services, that claim comes within the scope of its protectable interest.

“Here, AIS alleged infringment of a mark it used in connection with the kind of products specified in its federal registration: ‘computer software and instruction manuals sold together’ that allow users to retrieve information online. Whether or not eBay ever used the SmartSearch mark in connection with goods specified in AIS’s registration is irrelevant to the question of whether AIS established a valid, protectable interest. By virtue of its federal registration, AIS discharged its burden of establishing the validity of the SmartSearch mark in connection with those goods listed in the registration. Whether eBay’s use of SmartSearch infringed AIS’s protected interest then becomes a question of likelihood of confusion.”

The case cite is Applied Information Sciences Corp. v. eBay, Inc., Nos. 05-56123 and 05-56549, __ F.3d __, 2007 WL 4553999 (9th Cir. Dec. 28, 2007).

Plaintiff Robert Guichard is an independent film producer who is working on a proposed, unproduced screenplay titled “Whisper of the Blue” about an ex-Navy SEAL who sets out to find a ship of sunken gold and comes across a modern-day pirate. In February 2006, Mr. Guichard launched a Web site at www.whisperoftheblue.com that contains information about his project.

Filiming on the set of “Whisper of the Blue”

In Oct. 2006, Mr. Guichard sued in the Northern District of California to enjoin defendant Universal City Studios LLLP from using “Whisper” as the title of its upcoming motion picture, which had been in production since November 2004. Universal’s movie is about the kidnapping of a seemingly meek 10-year-old boy whose kidnappers soon realize is far less innocent than he appears and, while he may be quiet, they had better be careful because his whisper “may be the last thing that they hear.”

Universal’s “Whisper” (now on DVD)

Plaintiff argued he had gained exclusive control over the use of the word “whisper” in the title of his project because he had acquired a service mark in his Web site domain name for “providing information, via the Internet, in the field of entertainment, namely, the development, production and distribution of motion picture films.”

The court disagreed. In June, Judge Jeffrey White denied Mr. Guichard’s motion for preliminary injunction because “his described use of the WHISPER OF THE BLUE mark does not satisfy the ‘use in commerce’ requirement necessary to establish priority of use. Although Plaintiff alleges that there have been multiple visits to his website since its launch on February 4, 2006, this minimal use does not establish ‘use in commerce’ as required to establish priority. There is no showing that Plaintiff has used his mark in the actual sale or advertising of services in commerce.”

The court also found that Universal had already invested more than $12 million in its “Whisper” movie by the time Mr. Guichard launched his Web site so Universal had priority, not Mr. Guichard.

The court similarly rejected Mr. Guichard’s evidence of confusion: “During oral argument on this motion, in an effort to establish possibility of confusion, Plaintiff introduced an exhibit consisting of a number of Google searches he had conducted using the terms ‘whisper underwater production,’ ‘whisper underwater actors,’ and ‘whisper underwater ‘feature film’. The searches pulled up listings that included both the website for Plaintiff’s proposed film project and other information and listing[s] with reference to Defendants’ motion picture. However, the search is not probative as the search function calls up any internet listing with the search terms, including any motion picture with the search words in the same listing. The searches are far too broad and not probative as to likelihood of confusion. There is no evidence of actual or likelihood of confusion in the record.”

On Dec. 20, the Ninth Circuit upheld the Central District’s denial of Mr. Guichard’s motion for prelminiary injunction. In an unpublished decision, it found: “The district court’s conclusion that Guichard’s web presence at whisperoftheblue.com was not a use in commerce sufficient to create a protectable trademark interest is consistent with our precedent. Because Guichard has no protectable trademark interest, no infringement occurred.”

The case cite is Guichard v. Universal City Studios LLLP, No. 07-16089, 2007 WL 4467589 (9th Cir.).