Seattle Trademark Lawyer

On Sept. 21, the Seattle Post-Intelligencer ran a story about a Christian-themed clothier selling T-shirts and caps with a Christian spin on Starbucks’ familiar logo. It replaces the siren with Jesus and the words “Starbucks Coffee” with “Sacrificed for Me.” It only comes in one color: coffee. It’s available locally for $14.99 at a Shell gas station in Seattle’s Queen Anne Hill neighborhood, and on the Internet at www.christiantshirts.com and www.JesusHats.com.

The maker, Berryville, Ark.-based Kerusso, is the nation’s largest Christian-themed apparel company. Kerusso told the P-I: “It’s interesting how many of our parodies do end up as best-sellers. I think people like the fact that they can get a little chuckle out of something and at the same time express their faith.”

Parody or infringement?
Kerusso’s (left) and Kieron Dwyer’s adaptations

While it may be a best seller, is it really parody? If so, it’s protected as free speech. If not, it’s trading on Starbucks’ goodwill. In the Ninth Circuit, “a true parody will be so obvious that a clear distinction is preserved between the source of the target and the source of the parody….” Dr. Seuss Enterprises, L.P. v. Penguin Books USA, Inc., 109 F.3d 1394, 1405 (9th Cir. 1997). Moreover, “[t]he claim of parody is no defense ‘where the purpose of the similarity is to capitalize on a famous mark’s popularity for the defendant’s own commercial use.’” Id. at 1406, quoting Hard Rock Cafe Licensing Corp. v. Pacific Graphics, Inc., 776 F.Supp. 1454, 1462 (W.D.Wash.1991).

As the Ninth Circuit later explained, “the book The Cat NOT in the Hat! borrowed Dr. Seuss’s trademarks and lyrics to get attention rather than to mock The Cat in the Hat! The defendant’s use of the Dr. Seuss trademarks and copyrighted works had no critical bearing on the substance or style of The Cat in the Hat!, and therefore could not claim First Amendment protection. Dr. Seuss recognized that, where an artistic work targets the original and does not merely borrow another’s property to get attention, First Amendment interests weigh more heavily in the balance.” Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894, 901 (9th Cir. 2002).

Given these authorities, Kerusso’s use of Starbucks’ mark appears mainly to get attention. It does not mock Starbucks or offer any comment on the company the mark represents; it merely makes use of the company’s familar trademark. Therefore, it probably is infringing (and dilutive) use.

A closer case occurred a few years ago when artist Kieron Dwyer sold T-shirts with a logo that replaced “Starbucks Coffee” with “Consumer Whore,” added dollar signs, and gave the mermaid a cell phone. That adaptation would seem to offer plenty of commentary about Starbucks. The Northern District of California, however, begged to differ and imposed a preliminary injunction against Mr. Dwyer. The case later settled.

Starbucks should be on solid ground to obtain similar relief against Kerusso.

On Sept. 10, the District of Oregon entered findings of fact and conclusions of law in a trademark infringement case between two charter bus companies, plaintiff Meridian Transportation Resources, LLC, and defendant Magic Carrier Resources, LLC. After a one-day trial, Magistrate Judge Janice Stewart found that defendant’s MCR-WEST trademark infringed plaintiff’s MTR WESTERN mark.

Seattle-based MTR Western operates 30 buses in Portland and is Oregon’s second-largest charger motor coach carrier. The court found it uses the following trade dress: “a solid gold painted motor coach with a decal on its side, close to the windows that reads MTR WESTERN in its stylized trademark format. This stylization includes ‘MTR’ in bold and italic font, and ‘Western’ in cursive font, accompanied by a logo with two swirls in contrasting colors … close to the driver’s side window of the motor coach. The Swirl Design logo and the MTR Western (Stylized) trademark are colored in orange, black, and white. The trade dress also includes an operating authority decal which includes the phrase ‘PROUDLY OWNED AND OPERATED BY’ preceding the operating authority information required by the U.S. Department of Transportation.”

Defendant Magic Carrier is owned by two Ukrainian brothers, Nikolay and Vitaly Uzko. The brothers formed the company in 2006 after reading an article about one of MTR Western’s owners and wanting to emulate his success. The Yuzkos purchased one used white Prevost motorcoach, which is the same model used for most of MTR Western’s fleet. To learn more about the business, the brothers visited MTR Western’s facility in Portland and talked to its sales manager, who shared information about where they could obtain service and maintenance. Nikolay Uzko chose the name “Magic” because he had used the name for his first company, Magic Wheels. The court found the brothers chose the other words “Carrier” and “Resources” as descriptive of the business but also with the intent to adopt a name similar, but not identical to, MTR Western.

Magic Carrier added an operating decal on one side of its bus with the same tag line used by MTR Western (“PROUDLY OWNED AND OPERATED BY”) preceding the operating authority information required by the U.S. Department of Transportation. Similar to MTR Western, Magic Carrier’s operating decal was stamped in black capital letters, although in a different font. The court found that although other busses also use the same or similar tag lines, the Yuzkos intended to adopt an operating decal name similar, but not identical to, MTR Western’s operating decal.

Magic Carrier registered the domain name mcr-west.com and developed a Web site for use in connection with its services. It also developed a business card containing the name MCR-West in stylized script above Magic Carrier’s full name, as well as a photograph of the coach. Using Photoshop, a friend of the brothers inserted an image of the coach in front of the Vatican and the Eiffel Tower and dropped a logo and the name MCR-West onto the image of the coach. The logo is common clip art and consists of a swirl design in gold and black. The court found the swirl was similar to MTR Western’s swirl design logo, but was more linear and without complete circles. Although shown on the business card, the logo was never painted onto the coach.

Upon being served with the summons and complaint, Magic Carrier destroyed its business cards, took down its Web site, and stipulated to a preliminary injunction, which the Court entered in June. Before trial, Magic Carrier stipulated to entry of a permanent injunction.

The court found most of the Sleekcraft factors weighed in favor of finding likelihood of confusion. Therefore, the court found Magic Carrier’s use infringed MTR Western’s trademarks and the Oregon state analog. However, the court refused to award MTR Western its attorneys fees as either an “exceptional case” under the Lanham Act or as the prevailing party under Oregon’s unfair and deceptive practices statute because it found the lawsuit had been unnecessary to avoid the damage that Magic Carrier’s infringement had caused.

The court explained that if MTR Western had “approached Magic Carrier less aggressively or had MTR Western’s lawyers first sent a cease and desist letter to Magic Carrier explaining trademark infringement, then this lawsuit would likely have been avoided. MTR Western gave Magic Carrier too little time to comply before engaging in litigation.”

The case cite is Meridian Transp. Resources, LLC v. Magic Carrier Resources, LLC, No. 06-820, 2007 WL 2688129 (D. Or.).

Design house Paul Frank Industries, Inc., brought a trademark infringement action in the Central District of California against its namesake and former designer, Paul Frank Sunich, based on the commercial use of his name. In particular, plaintiff alleged that Mr. Sunich and his companies’ Web sites, www.paulfranksunich.com, www.chasermerch.com, and www.treestitchdesign.com, and defendants’ sale of t-shirts using Mr. Sunich’s full name, “Paul Frank Sunich,” infringe PFI’s rights in its PAUL FRANK trademark.

Plaintiff brought a motion for preliminary injunction to enjoin defendants from using the name “Paul Frank” in any commercial context. Defendants responded that Mr. Sunich has an absolute right to use his full name in any context, including in connection with the sale of t-shirts that he designs.

On August 21, the court granted the motion in part and denied it in part. On one hand, It found: 

“Under trademark law, there is no absolute right to use one’s own personal name where that use would be confusingly similar to an established use of a famous mark that the public has come to associate with another source. Through the extensive efforts of both PFI and Mr. Sunich, the Paul Frank mark has become famous. Mr. Sunich, therefore, has no absolute right to make use of his name in a manner that would be confusingly similar to PFI’s use of the Paul Frank mark. Accordingly, Mr. Sunich, along with the other Defendants, must be enjoined from using his full name in the sale of Defendants’ T-shirts.”

On the other hand, the court also found:

“Mr. Sunich, however, is entitled under trademark law to use his name in other contexts, commercial or otherwise, to identify himself and inform others about his work. PFI has no right to prevent Mr. Sunich and the other Defendants from using Mr. Sunich’s full name in contexts where such use will not result in any confusion with PFI’s use of the Paul Frank mark.”

With regard to defendants’ Web sites, the court declined to enjoin defendants’ use “so long as they maintain their messages explaining that Mr. Sunich does not work for or with PFI” or “sell or link to any other site that would sell clothing using the Paul Frank name in any form on either the product itself or the product’s label.”

The case cite is Paul Frank Industries, Inc. v. Sunich, No. 07-0609, __ F.Supp.2d __, 2007 WL 2376998 (C.D. Cal.).

Video Only, Inc., today filed a Rule 41(a) notice of dismissal with the Western District, terminating its trademark claims against JSSI Group, Inc., Domain Name Systems, Inc., and three individual defendants. The dismissal follows a motion to dismiss that defendants filed last week.

In its December 2006 complaint, the Seattle-based video retailer alleged that defendants “host, operate, provide DNS services for, serve as the registrar for the associated domain name, and/or publish the Internet web site http://www.videonly.com/….” Video Only alleged that defendants used this site to divert traffic from Video Only’s site and to redirect it to another site that advertises, sells, and promotes pornographic material. The complaint asserted claims for infringement, contributory infringement, infringement, false designation of origin, dilution, cybersquatting, violation of Washington’s Consumer Protection Act, and unjust enrichment.

On August 31, the defendants filed a motion to dismiss on the alleged ground that they did not have sufficient minimum contacts with the state to provide the court with jurisdiction. Defendants claimed they resided and did business in Florida and Canada. They also argued that Video Only’s claims against them in their capacity as a registrar of domain names should be dismissed on the ground that Ninth Circuit courts do not hold registrars liable for the kinds of claims Video Only asserted. The dismissal, of course, makes this motion moot.

It’s unclear (to STL, that is) whether the dismissal is part of a settlement. Defendants’ alleged typosquatting site appears to be inactive, suggesting that it may have been taken down as part of a deal.

The case cite is Video Only, Inc. v. JSSI Group, Inc., No. 06-1778 (W.D. Wash.).

The September issue of InsideCounsel magazine reports on the Ninth Circuit’s July 3 decision in Perfect 10, Inc. v. Visa Int’l Svc. Ass’n, which found that credit card companies were not contributorily or vicariously liable for trademark or copyright infringement. The plaintiff, a porn site operator, had argued that the defendant banks and credit card companies should be liable for making infringement profitable by processing credit card payments to infringers’ sites. STL’s original post on the case here.

Julius Melnitzer’s article, “Porn Site Loses High Stakes,” quotes yours truly as characterizing the ruling as a “pro-commerce, pro-Internet decision that could have slowed down commerce significantly if it had gone the other way.”

Writing in dissent, Judge Alex Kozinski argued that credit card companies that allow infringers to become profitable should be just as liable as direct infringers.

Addressing this point, the article also quotes fellow blogger and law professor Eric Goldman (who I note garnered a quote in last month’s issue as well) as explaining: “While the majority sees [financial service providers] like power companies — behind the scenes vendors that don’t touch the flow of infringing bits — the minority thinks FSPs are no different than bagmen for an illegal deal who should take responsibility for it.”

The case cite is Perfect 10, Inc. v. Visa Int’l Svc. Ass’n, __ F.3d __, 2007 1892885, No. 05-05170 (9th Cir.).