Seattle Trademark Lawyer

Oldcastle Precast, Inc., brought suit in the Western District against Granite Precasting & Concrete, Inc.

Oldcastle designs and manufactures precast concrete products, including vaults that typically house electrical or metering equipment. It registered a number of copyrights for drawings of its products. Oldcastle alleged that in 2006 it discovered that Granite was copying its drawings and using part numbers that corresponded to those used in Oldcastle’s catalog that serve no functional purpose.

Oldcastle alleged that in 2009 it bid on a project and discovered that Granite was still copying its drawings and using its part numbers. Oldcastle alleged that Granite has been awarded contracts by using some of Oldcastle’s designs and drawings, and that at least one of Oldcastle’s customers believed that Granite’s products were the same as Oldcastle’s and that Granite was an authorized reseller of Oldcastle’s goods.

Oldcastle asserted claims for copyright infringement as well as violation of the Lanham Act and Consumer Protection Act. Granite moved to dismiss the Lanham Act and CPA claims based on copyright preemption.

On June 1, Judge Marsha Pechman granted the motion as to Oldcastle’s CPA claim but denied it as to its Lanham Act claim.

“The CPA claim boils down to an allegation that Defendant marketed Plaintiff’s designs and drawing as its own, which is purportedly a violation of the CPA,” the court found. “The claim implicates all of Plaintiff’s alleged rights under the Copyright Act and lacks an extra element.”

By contrast, the court found Oldcastle’s Lanham Act claim “contains sufficiently distinct elements and allegations to avoid preemption by the Copyright Act. First, Plaintiff seeks the cost of corrective advertisement, which is a form of relief that is unavailable under the Copyright Act. Second, the nature of the claims is distinct. Plaintiff alleges Defendant intentionally used the same part numbering system with regard to precast items to confuse potential customers into thinking they were Plaintiff’s products. This is distinct from a claim of reproducing copyrighted material. Plaintiff states further that one of its customers was indeed confused as to whether Defendant was an authorized reseller of Plaintiff’s products. The facts supporting the two claims are thus distinguishable.”

The case cite is Oldcastle Precast, Inc., v. Granite Precasting & Concrete, Inc., 2010 WL 2217910, No. 10-322 (W.D. Wash. June 1, 2010) (Pechman, J.).

Having obtained a preliminary injunction against HendrixLicensing.com, Ltd., and its affiliates last July, Jimi Hendrix’s licensing company, Experience Hendrix, L.L.C., and its affiliates moved for summary judgment. (Previous STL post here.)

On May 19, the plaintiffs got their wish.

Western District Judge Thomas Zilly found the defendant sellers of art depicting Mr. Hendrix infringed Experience Hendrix’s registered trademarks.

Defendants argued that they stopped using the complained-of domain names and the Hendrix headshot logo but argued that their use of plaintiffs’ trademarks in their domain names and business names was protected fair use and was not likely to cause confusion.

After discussing the Ninth Circuit’s influential nominative fair use case of Playboy Enterprises, Inc. v. Welles, 279 F.3d 796 (9th Cir. 2002), the Western District found defendants’ use did not make the grade. 

“The Court finds that Defendants’ use of Plaintiffs’ trademarked HENDRIX in Defendants’ URL addresses and business names does not describe Plaintiffs’ product by rather Defendants’ own product — the marketing and licensing of Jimi Hendrix related goods. Thus, the Court concludes that the nominative fair use test does not apply to Defendants’ use of Plaintiffs’ marks in Defendants’ URL addresses and business names.”

In a footnote, the court added: “Even if the Court were to conclude that the nominative fair use test should be applied to Defendants’ use of HENDRIX in Defendants’ URL addresses and business names, the Defendants have not satisfied the nominative fair use test. As to the first part of the test, Defendants’ use of Plaintiffs’ trademarked HENDRIX is not necessary to describe Defendants’ products. Like Welles’ use of ‘PMOY ‘81’ in the wallpaper of her website [in Welles], Defendants’ use of Plaintiffs’ HENDRIX mark in Defendants’ URL addresses and business names does not appear to describe Jimi Hendrix. Defendants’ use does not accompany any image of or created by Jimi Hendrix. Thus, the Defendants’ use of Plaintiffs’ HENDRIX mark in Defendants’ URL addresses and business names fails the first prong of the nominative fair use test.”

The court went on to find that defendants’ use of plaintiffs’ marks in defendants’ URL addresses and business names, their use of defendants’ headshot logo, and their use of their signature mark infringed plaintiffs’ registered trademarks.

The case cite is Experience Hendrix, L.L.C. v. HendrixLicensing.com, Ltd., 2010 WL 2104239, No. 09-285 (W.D. Wash. May 19, 2010) (Zilly, J.).

Plaintiff SafeWorks, LLC, sells and rents lifting and hoisting equipment for use in construction under its SPIDER registered trademarks. Defendant Teupen America, LLC, rents and sells track-mounted aerial lift machinery in connection with the term “spiderlift” and applied to register the mark THE SPIDERLIFT COMPANY.

In August 2008, Teupen and affiliated companies sued SafeWorks in the District of Massachusetts seeking a declaration of noninfringement on the ground that “spiderlift” was generic. SafeWorks then sued Teupen and its affiliated companies in the Western District for trademark infringement. The cases were consolidated in the Western District.

The case was tried to Western District Thomas Zilly in May. Following are highlights from the court’s Findings of Fact and Conclusions of Law, entered today: 

• “By obtaining an approved federal trademark application, defendants have made clearly inconsistent statements to the USPTO and to this Court: on the one hand, that the Mark SPIDERLIFT is distinctive and entitled to federal registration with the USPTO; and on the other hand, that the Mark SPIDERLIFT is generic and therefore not protectable or registrable under any circumstances.”
• SPIDERLIFT is not generic.
• SafeWorks has demonstrated that it has a valid and senior SPIDER® Mark. Application of the Sleekcraft factors demonstrates that there is a likelihood of confusion between SafeWorks’ SPIDER® Marks and defendants’ use of the term “spiderlift” based on the similarity of the terms, the strength of the SPIDER® Marks, the defendants’ intent to infringe, the overlap of customers and channels of trade, and incidents of actual confusion.”
• The defendants are ordered within 20 days to take “all necessary steps to cease using the domain name www.spiderlifts.com”; to destroy all marketing materials that use the infringing Mark “spiderlift”; and to abandon its federal trademark application for THE SPIDERLIFT COMPANY.
• SafeWorks is awarded defendants’ net profits during the period of infringement, from August 2004 through December 31, 2009, in the amount of $56,882.
• The case was an “exceptional case” justifying an award of attorney’s fees.
• “Defendants’ deliberate and willful acts include, without limitation, deliberate indifference to: (1) the constructive notice conferred by the long time registration of the SPIDER® Marks, (2) the repeated warnings sent by SafeWorks, and (3) defendants’ agreement to stop infringing, which agreement they then breached.”
• The Court ordered SafeWorks to move for an assessment of reasonable attorney’s fees within 20 days.

The case cite is SafeWorks, LLC v. Teupen America, LLC, No. 08-01219 (W.D. Wash.) (Zilly, J.).

General Dentistry for Kids, LLC, sued Kool Smiles, P.C. in Arizona superior court for trademark infringement and unfair competition under state law. Kool Smiles removed to federal court. The District of Arizona denied General Dentistry’s motion to remand, and ultimately granted Kool Smiles’ motion for summary judgment.

General Dentistry appealed to the Ninth Circuit, arguing that the district court lacked jurisdiction because Kool Smiles’ notice of removal failed to establish the $75,000 amount-in-controversy requirement.

Kool Smiles argued that it later provided a third-party affidavit stating that the cost of complying with General Dentistry’s requested injunction relief would exceed $135,000. In doing so, it relied on Gaus v. Miles, 980 F.2d 564 (9th Cir. 1992), which provided that a defendant must set forth “in the removal petition itself, underlying facts supporting its assertion that the amount in controversy exceeds” the jurisdictional amount.

Trouble is, the Ninth Circuit found that Gaus had been distinguished by later authority holding that a district court may consider later-provided evidence as amending a defendant’s notice of removal. The Ninth Circuit found the District of Arizona properly applied that later authority and upheld the district court’s denial of General Dentistry’s motion to remand.

The case cite is General Dentistry for Kids, LLC v. Kool Smiles, P.C., 2010 WL 1986187, No. 09-16017 (9th Cir. May 18, 2010).

Despite this post, STL’s not heading to INTA after all.

I inherited a case that needs me here. I decided this weekend I can’t make it to Boston as planned.

I’ll see you in person at INTA next year — at the latest!