Software Maker Files Declaratory Judgment Action Against The Naked Cowboy

The Naked Cowboy

Bloomberg reports that European mobile phone software maker Gameloft has filed a declaratory judgment action against Robert Burck, better known as “The Naked Cowboy” (the self-appointed most famous “busker” in New York City), in the U.S. District Court for the Central District of California. See Gameloft S.A. et al, v. Robert Burck, et al,, Case No. 09-cv-3769 (C.D. Cal. Filed May 27, 2009).  A copy of the complaint can be downloaded here. 

(Click here for prior blog posts regarding Burck’s lawsuit against against Mars Incorporated, the maker of M&Ms candies, over an M&M ad featuring a cartoon M&M guitar-playing street performer wearing a cowboy hat, boots, and underwear – all reminiscent of Burck’s alter ego).

Burck obtained a registration for the mark NAKED COWBOY for various entertainment services on April 9, 2002. He obtained second registration on September 2, 2003, for a design mark resembling The Naked Cowboy’s likeness (pictured below) for various clothing items including, of course, underwear.

According to the Bloomberg article, one of Gameloft’s games contains a character name Nick who wears a cowboy hat and plays the guitar in Times Square. (It is not clear from the article if Nick is wearing white underwear and white boots).

Apparently, Burck has threatened to take legal action against Gameloft for trademark infringement. Thus, Gameloft took preemptory action by filing for a declaratory judgment of non-infringement.

Gameloft seeks a declaration that its Nick character is protected by the First Amendment and does not infringe on Burck’s trademark rights. Gameloft describes Nick as a “minor part of the game” representing “a humorous caricature that imitates the style of Times Square performers for comic effect and is not a literal depiction of the Naked Cowboy.”

By filing this case in California (as opposed to waiting until Burck takes action – likely in New York where Burck is located), Gameloft may be hoping to take advantage of last year’s decision Ninth Circuit decision in E.S.S. Entertainment 2000, Inc. v. Rock Star Videos, Inc., __ F.3d __ (9th Cir. Nov. 5, 2008) (blogged here). In that case, the Ninth Circuit ruled that the First Amendment protected the makers of the video game Grand Theft Auto: San Andreas from trademark infringement claims brought by the owner of an East Los Angeles strip club named “Play Pen” over a depiction of a fictional “East Los Santos” strip club named “Pig Pen” in the video game. The court held that Rock Star’s modification of the “Play Pen” mark had some artistic relevance in the underlying work and was not explicitly misleading, and thus was protected by the First Amendment.

Think Computer Agrees to Drop Cancellation Petitions Against FACEBOOK

WebProNews reported that the dispute between Facebook, Inc. (“Facebook”) and Think Computer Corporation (“Think Computer”) over the trademark FACEBOOK had been resolved with a confidential settlement agreement.

In April 2008, Think Computer filed a cancellation petition with the Trademark Trial and Appeal Board to cancel Facebook’s trademark registration for the mark FACEBOOK. See Think Computer Corporation v. Facebook, Inc., Cancellation No. 92049206 (T.T.A.B. Filed April 15, 2008). A second cancellation proceeding was instituted in March 2009 over a second registration for FACEBOOK. See Think Computer Corporation v. Facebook, Inc., Cancellation No. 92050675 (T.T.A.B. Filed March 12, 2009).

Think Computer’s founder, Aaron Greenspan, attended Harvard along with Facebook’s cofounder Mark Zuckerberg in 2002-2004. In August 2003, Think Computer put out a web-based student portal called houseSYSTEM, which contained a section called "The Universal Face Book."

In both cancellation petitions (here and here), Think Computer claimed 1) priority of use (using the marks “FACEBOOK,” “FACE BOOK,” “UNIVERSAL FACE BOOK,” and “FACENET” at least as early as September 19, 2003 in connection with “on-line information services featuring information regarding, and in the nature of, collegiate life, classifieds, virtual communities and social networking)”; 2) genericness (the terms “FACEBOOK” and “FACE BOOK” have been used for decades to describe books displaying faces of students or other individuals); and 3) fraud on the PTO.

Regarding the allegations of fraud, Think Computer claimed that Facebook’s initial application declaration or “no other person. . . has the right to use the mark” was false because the Facebook founders were aware of Think Computer’s use of the Facebook mark. Interestingly, the fraud allegations also make reference to Facebook’s Petition to Make Special (under T.M.E.P. §1710) its two pending FACEBOOK applications in order to expedite their examinations. Facebook filed its petitions because it was in the midst of litigation with ConnectU, which had threatened a bidding war over the facebook.com domain name. Think Computer alleged that the rushed examination allowed Facebook to rush through its applications, and thereby preventing the PTO from considering a possible genericness refusal or other similar marks that had been used in the marketplace.

Of course, like so many trademark disputes, the veracity of Think Computer’s allegations will never be tried as the parties announced that all outstanding claims between the parties, including the issue regarding the FACEBOOK trademarks, have been amicably resolved.

Cartier files (and later withdraws) trademark lawsuit against Apple over “Fake Watch” iPhone App

Trademark litigation watchers are well aware of Cartier's aggressive protection of its “TANK” line of watches (created by Louis Cartier in 1917, who was supposedly inspired by the Renault tanks that Cartier saw during World War I). I previously wrote (link here) about one such lawsuit Cartier filed against Donna Karen.

So it probably came as no surprise when news came out today (reports here and here) that Cartier had filed a trademark infringement lawsuit against Apple Inc. alleging that an iPhone app named Fake Watch infringed Cartier's trademark and trade dress rights associated with Cartier's Tank watches.  [Update: the complaint can be viewed here (HT: Marty Schwimmer)]

The Fake Watch app (made by a company named Digitopolis Co. and available for downloading on Apple's online iTunes store) displays the time using an image of "look-alike famous wristwatches" (one of which apparently looks like Cartier’s TANK watch).

Cartier claimed that Apple’s "use of Cartier's Tank mark and Cartier's trade dress and proprietary designs is likely to cause consumers to believe that Cartier's and defendant's goods originate from the same source."

But by the end of the day, reports surfaced that Apple had removed the app from iTunes and Cartier’s lawyer issued a statement that Cartier would be withdrawing the lawsuit (WSJ report here).

If only all trademark disputes could be settled this quickly.

[Update: Ron Coleman presents his thoughts about what is really going on behind the scenes with respect to this filed and later withdrawn complaint by Cartier.]

Another Quacky Lawsuit Involving Duck Tours

I previously wrote here about the ongoing dispute between two amphibious tour operators battling over use of the term “duck tour” in connection with amphibious tours. Now comes news of another amphibious tour company’s lawsuit against a competing amphibious sightseeing tour company – only this one involves the “quack” sound of a duck.

On May 19, 2009, Ride the Ducks International, LLC (“Ride The Ducks”) filed a trademark infringement lawsuit against Bay Quackers, LLC (“Bay Quackers”) in the U.S. District Court for the Central District of California. See Ride the Ducks International, LLC v. Bay Quackers, LLC, Case No. 09-cv-2195 (C.D. Cal.). A copy of the complaint can be downloaded here.

Ride The Ducks, based in Georgia, describes itself as the nation's largest amphibious tour operator and amphibious vehicle manufacturer. It operates a fleet of over 75 amphibious tour vehicles offering amphibious sightseeing tours in numerous cities including Baltimore, Branson, Philadelphia, Seattle, and San Francisco to over 1,000,000 guest each year.

As described in the complaint,

To foster participation by its customers, Ride The Ducks distributes a duck call device, known as a “Wacky Quacker,” to its patrons for use while aboard the amphibious vehicle. The customers use the Wacky Quacker devices during the course of the tour to quack at one another, the tour personnel and random passers-by. Ride the Ducks tour guides, likewise, use the “Wacky Quacker” duck calls to encourage participation of the tour patrons.

In addition to having a registered trademark for WACKY QUACKERS (for duck calls and toy noise makers), Ride The Ducks is the owner of a registered sound mark for “a quacking noise made by tour guides and tour participants by use of duck call devices throughout various portions of the tours” in connection with “tour guide services over land and water by amphibious vehicles” (the “Ride The Ducks Sound Mark”). The mark was registered in September 2001, and in August 2007, Ride The Ducks filed a Section 15 Declaration of Incontestability making its registration “incontestable.” Subject to certain limitations (see 15 U.S.C. §§1065 and 1115(b)), an "incontestable" registration is conclusive evidence of: (1) validity of the registered mark; (2) the registration of the mark; (3) the owner's ownership of the mark; and (4) the owner's exclusive right to use the mark with the goods/services. See 15 U.S.C. §1065. Most importantly, an “incontestable” registration cannot be cancelled on the basis that it is merely descriptive.

Ride The Ducks maintains that consumers recognize the Ride The Ducks Sound Mark as representing Ride The Ducks’ “high-quality tour guide services.” [really?-ed.]

The complaint accuses Bay Quackers, a San Francisco-based amphibious tour company, of handing out similar duck call devices to its tour patrons for use while aboard the amphibious vehicle during the tour which makes a sound “similar to, if not identical to” the Ride The Ducks Sound Mark.

Ride The Ducks sent cease and desist letters to Bay Quackers on at least three occasions throughout 2008 and one time as recently as April 20, 2009 (the letters are included as an exhibit to the complaint), but apparently Bay Quackers has continued to hand out duck call devices as part of its tours.

Ride The Ducks causes of action are for registered trademark infringement under 15 U.S.C. §1114, federal unfair competition under 15 U.S.C. §1125(a), and unfair competition under California law (Cal. Bus. & Prof. Code §17200). Ride The Ducks seeks injunctive relief, destruction of all of Bay Quackers’ duck sound noise makers, Bay Quackers’ profits, treble damages, costs and attorneys fees.

Vegas™Esq. Comments:
This is one of those cases where your initial reaction might be one of disbelief. How can a company claim exclusive rights to a duck sound in connection with “duck tours”? Moreover, how could the PTO have granted a trademark registration for this type of sound mark?

But when you take a step back, you can begin to appreciate how this type of “duck call” device, when used in connection with this tour operation, is somewhat distinctive. After all, such “duck calls” are not a necessary type of mark that all amphibious tour operators would need to use in order to effectively compete in the amphibious tour marketplace. Just because it seems obvious to hand out “duck call” devices for patrons on a “duck tour” does not mean that it cannot serve as a unique source identifier – especially if there were no other “duck tour” companies out there doing it.

Of course, claims to a sound trademark normally are accompanied by challenges that the sound mark fails to function as a mark (i.e., is the “quacking noise made by tour guides and tour participants” marketed in such a way that customers would really identify it as identifying a single source when used in connection with an amphibious tour or would customers just recognize that patrons are making the sound of a duck while on a generic “duck tour”?). It’s a valid question and one that Bay Quackers will certainly raise should it decide to challenge Ride The Ducks. However, with its incontestable trademark registration, Ride The Ducks certainly has the upper hand in this quacky dispute.

If you care to see the Ride The Duck Sound Mark in action, check out this YouTube video.

[May 21, 2009 Update: John Welch pointed out that Boston Duck Tours does have its own registered sound mark for "the sound of a human voice making quacking noises like a duck" in connection with "conducting sightseeing tours." Interestingly, when Ride The Duck's application was originally published for opposition, Boston Duck Tours filed extensions of time to oppose registration. The threatened opposition resulted in the filing of a post-publication amendment that apparently resolved Boston Duck Tours' issue -- and what change was made? Ride The Ducks' original description was "a quacking noise made by tour guides and tour participants by use of duck calls throughout various portions of the tours." The amended description, and ultimately registered mark, was directed to "duck call devices." So it appears that the Ride The Ducks' focus on the "device" made all the difference . . . and reflects an important limitation on the scope of Ride The Ducks trademark rights.]

GunBroker.com Seeks Declaratory Relief Against Heckler & Koch and the Trademark Enforcement Efforts of Continental Enterprises, Inc.

On May 14, 2009, GunBroker.com, LLC (“GunBroker”), the owner of the website www.GunBroker.com, filed a declaratory relief action against Heckler & Koch Inc. (“H&K”), the U.S. subsidiary of the German firearm manufacturer Heckler & Koch, GmbH, in the U.S. District Court for the Middle District of Georgia. See GunBroker.com LLC v. Heckler & Koch Inc., Case No. 09-cv-00051 (M.D. Ga.). A copy of the complaint can be downloaded here.

H&K is the owner of the registered HK logo trademark (pictured above) as well as numerous other registered marks that H&K uses in connection with certain models of H&K firearms such as USP, P7, and MP7 (some of which are also occasionally used in connection with other items including swords and knives).

Heckler & Koch's MP7

GunBroker’s website offers an online auction service for third parties to sell merchandise such as firearms, knives, swords, and hunting equipment and accessories to interested parties. Sellers create the auction listing and submit it to GunBroker, which then adds the auction to its site, administers the auction, notifies the auction winner, and provides details on how the winner can contact the seller. GunBroker’s Website User Agreement specifically prohibits the posting of items for sale that violate any third party’s intellectual property rights, and GunBroker provides a mechanism for trademark holders to report any violations.

According to the complaint, on August, 27, 2008, GunBroker’s predecessor-in-interest received a letter from the “Office of the General Counsel” for Continental Enterprises, Inc. (“CE”). The letter indicated that CE had been engaged by H&K to protect H&K’s intellectual property and that several hundred auction listings on GunBroker’s website violated H&K’s trademark and copyright rights. The letter enclosed a 16 page printout from GunBroker’s website that showed a list of auction listings (over 340) posted by third party sellers on the website who were attempting to sell merchandise and in some way using one or more of the H&K trademarks.

The basis of CE’s engagement to enforce H&K’s intellectual property rights was a letter from James E. Baker, Jr., an attorney with the Baltimore, Maryland law firm of Baxter, Baker, Sidle, Conn & Jones, P.A. (the “Baxter Firm”), which purportedly confirmed that H&K had engaged the services of CE to identify and investigate any unauthorized uses of H&K’s intellectual property. Apparently, however, the letter did not explain the relationship between the Baxter Firm and H&K nor did it indicate whether or not the Baxter Firm is an agent of H&K or otherwise entitled it to act on behalf of H&K.

According to the complaint, the owner of CE is Mr. Karl Manders, a career private investigator (but not a lawyer) who, through his company, concentrates exclusively on the enforcement of intellectual property rights. GunBroker believes that CE obtains a percentage of any settlement proceeds that CE receives from its efforts. CE has supposedly acted on behalf of such companies as Heineken USA, Inc., Just Born, Inc., and Big Dog Holdings, Inc.

GunBroker also notes in its complaint that Indiana’s Rules of Professional Conduct (Rule 5.4(a)) prohibits a lawyer from entering into a partnership with a non-lawyer and from sharing legal fees with a non-lawyer and cites Indiana State Bar Legal Ethics Opinion (Indiana State Bar Association, Legal Ethics Committee, Opinion #7, 1991) discussing that Rule 5.4(a) was designed to prevent “the possibility of control by a lay person who is interested in profit, rather than the client’s interests, and control by a person who is unregulated by the profession.”

GunBroker alleges that it has become the target of CE’s “for profit” intellectual property enforcement efforts. Click here for one website’s detailed discussion about CE’s trademark enforcement efforts – including a separate page entitled “What To Do If Contacted By Continental Enterprises.”

GunBroker’s complaint notes that the list of allegedly infringing auctions provided by CE did not distinguish between allegedly infringing use of H&K’s trademarks and the fair use of H&K’s trademarks by sellers listing authentic H&K products or otherwise making a fair use of H&K’s trademarks. Moreover, despite GunBroker’s request, neither CE nor H&K have used the mechanism on GunBroker’s website, to report a specific violation or to clarify which if any, specific postings on GunBroker’s website that CE or H&K believe infringe on H&K’s trademarks.

CE has threatened that GunBroker’s further advertisement or sale of “infringing merchandise” would be considered “willful infringement,” and would subject GunBroker “to enhanced penalties, including, but not limited to, treble or statutory damages and attorneys fees.” CE has also threatened to “advise H&K to take whatever steps it deems necessary to fully protect its intellectual property rights.”

Based on CE’s actions and threats regarding GunBroker’s alleged trademark infringement of H&K’s trademarks through the third party auction listings on GunBroker’s website, GunBroker maintains that a substantial controversy exists between the parties to warrant GunBroker’s request for declaratory relief.

GunBroker seeks a declaratory judgment that it has not infringed H&K’s trademarks, that it has not committed any contributory trademark infringement through the auction listings by sellers comparing their product to an H&K product, selling products that are compatible with an H&K product, selling products that are a “knock-off or look alike” to an H&K product, or reselling a used H&K product, and that such uses of H&K’s trademarks by sellers in their auction listings is fair use.

Federal Texas Court Finds Domainer Texas International Property Associates Liable for Cybersquatting

Federal District Court Judge Ed Kinkeade of the Northern District of Texas dealt a defeat to domain name company Texas International Property Associates while giving a cybersquatting victory to Hoerbiger Holding AG (“Hoerbiger”). The court dismissed with prejudice all of TIPA’s causes of action against Hoerbiger and granted summary judgment in Hoerbiger’s favor on its counterclaim of cybersquatting. See Texas International Property Associates v. Hoerbiger Holding AG, 2009 U.S. Dist. LEXIS 40409 (N.D. Tex. May 12, 2009).

Hoerbiger conducts business in the fields of compression technology, automation technology, drive technology, and actuator technology. Hoerbiger has a trademark registration for the mark HOERBIGER (obtained October 8, 2002) and owns the website www.hoerbiger.com.

TIPA, a well-known domainer company that owns a portfolio of approximately 500,000 internet domain names that it uses to generate advertising revenues via click-through revenue, owned the horbiger.com domain name. When Hoerbiger first became aware of the domain name in June 2007, the site provided access to various hyperlinks labeled Automation, Compressor, Business, Valve, Web Site, Motion Control, Actuators, Storage, Cylinder, Linear Actuators and Control Valves – and a visitor, by clicking on those hyperlink labels was taken to a series of sponsored results or advertising links related to the user’s selection.

Hoerbiger asked TIPA to transfer the horbiger.com domain name, but TIPA refused, so Hoerbiger filed a UDRP action with the World Intellectual Property Organization (“WIPO”) against TIPA with respect to the domain name. The WIPO panel hearing the UDRP action found that Hoerbiger had shown that the horbiger.com domain name was confusingly similar to its HOERBIGER trademarks, that TIPA had no rights or legitimate interests in respect to the horbiger.com domain name, and that TIPA had registered and was using the horbiger.com domain name in bad faith. Accordingly, the panel, on October 19, 2007, ordered the horbiger.com domain name transferred to Hoerbiger.

TIPA subsequently filed suit against Hoerbiger in Texas state court on November 15, 2007, claiming that Hoerbiger has no rights in the horbiger.com domain name, and asking the court to prevent the transfer of the domain name to Hoerbiger. The case was removed to federal court by Hoerbiger, who added counterclaims federal trademark infringement, federal unfair competition, cybersquatting, and federal trademark dilution along with various state and common law claims. TIPA later amended its complaint to allege reverse domain name hijacking and fraudulent trademark registration and sought to prohibit the transfer of the domain name and cancellation of Hoerbiger’s registered mark HOERBIGER. Hoerbiger moved for summary judgment on all of TIPA’s claims and sought partial summary judgment on its cybersquatting counterclaim.

Hoerbiger’s cybersquatting claim alleged that registration of the horbiger.com domain name was done in bad faith for the purpose of “typosquatting” (i.e., using a domain name that is a typo or intentional misspelling of distinctive or famous mark).

In order to establish a cybersquatting claim under the Anti-Cybersquatting Protection Act (“ACPA”), a plaintiff must show that its mark was distinctive or famous at the time of registration of the domain name, (2) that the domain name registered is identical or confusingly similar to the distinctive or famous trademark, and (3) that the domain name registrant registered, trafficked, or used the domain name with a bad faith intent to profit plaintiff’s mark. See 15 U.S.C. § 1125(d)(1)(A)).

Hoerbiger argued that its federal registration of HOERBIGER made the mark presumptively distinctive and further argued that the HOERBIGER mark had acquired a secondary meaning as evidenced by TIPA’s own intentional copying of the HOERBIGER mark (evidenced by TIPA’s own advertising links to automation and compression products on its horbiger.com domain name). TIPA attempted to argue that HOERBIGER was not distinctive because the name is a surname; however, the court found the argument “disingenuous, given that TIPA itself has used ‘Horbiger,’ a very similar misspelling of ‘Hoerbiger,’ in association with advertising links for automation and compression, a deliberate copying.” The court found, with little discussion, that Hoerbiger had registered the mark, used it in connection with automation and compression, and that it had acquired secondary meaning, and thus was distinctive for purposes of the cybersquatting cause of action.

The court then found that the domain name horbiger.com was “identical or confusingly similar” to the HOERBIGER mark (noting that the domain name was deliberately used as a misspelling of Hoerbiger given that the website provided advertising links for automation and compression, the same products offered by Hoerbiger).

Finally, with respect to the factor of TIPA’s bad faith intent to profit from the Hoerbiger’s mark, the Court, analyzing the nine non-exclusive factors used to determine if a domain name owner had a bad faith intent to profit under the ACPA, found that most of the factors favored TIPA: 1) TIPA had no intellectual property rights in the domain name; 2) the horbiger.com domain name is not a legal name used to identify TIPA; 3) TIPA had not previously used the horbiger.com domain name in connection with the bona fide offering of goods or services; and 4) TIPA was using the site to generate revenue and not for a bona fide noncommercial or fair use. The court also noted that TIPA “must have known that the horbiger.com misspelling of HOERBIGER was confusingly similar, given that TIPA was using that misspelling to provide advertising links for automation and compression products.”

The only factor that slightly favored TIPA was that TIPA had never offered to sell the name to Hoerbiger; but the court quickly set that aside noting that TIPA was using the name for monetary gain - generating click-through advertising revenues for links to automation and compression.

The court rejected TIPA’s arguments that it was holding the domain name “in the surname sense” – based on the evidence showing that TIPA had used the website to provide links related to automation and compression -- products associated with the HOERBIGER mark. And in response to TIPA’s arguments that it bought the domain name because it was a “valuable internet property” (not because it was a trademarked term), the court again focused on the fact that TIPA had been using the horbiger.com domain name to provide advertising links to automation and compression, products that are expressly associated with the registered trademark at issue, as opposed to using the domain name to provide links unrelated to automation and compression -- activities that would more easily comport with good faith.

And when TIPA argued that it was not a cybersquatter because its domain name portfolio policy was to maintain domains with surnames and generic terms, the court found the argument puzzling given that the evidence showed TIPA using the horbiger.com domain name in its trademarked sense, namely to generate revenue in connection with automation and compression. The court also rejected TIPA’s invocation of the “fair use” defense set forth in 15 U.S.C. § 1115(b)(4) (which includes defense to infringement for use by a person of their own name in connection with their business and not as a mark) finding that finding that TIPA was not using the horbiger.com as a surname (much less using it as the name of someone in TIPA’s business).

The court stated:

Most significantly, since TIPA was using the domain to provide links related to automation and compression, it clearly knew that “horbiger” was a slight misspelling of Hoerbiger, a company dedicated to automation and compression. By using the name as it did, TIPA was generating advertising revenues based upon the deliberate use of a confusingly similar name. Further, when WIPO ruled that TIPA should transfer the domain name to Hoerbiger, TIPA refused to comply, instead protracting the issue by bringing this dispute.

[Comment: Since when is a domain name owner's use of the legal process to fight a UDRP action an indication of bad faith under the ACPA?]

In short, the court found that there were no genuine issues of material fact regarding Hoerbiger’s cybersquatting claim and entered judgment in favor of Hoerbiger on such claim.

The court then blasted through each of TIPA’s claims against Hoerbiger (without much discussion or explanation) – dismissing TIPA’s claims for fraudulent trademark registration, conversion, trespass to chattels, and tortious interference with a contract and/or peaceful use or enjoyment of property.

Regarding fraudulent trademark registration, TIPA argued that Hoerbiger’s failure to disclose to the U.S. Patent and Trademark Office (“PTO”) that the English translation of HOERBIGER is Horbiger, which is primarily a surname was an alleged false statement of fact. The court disagreed stating that TIPA offered no authority to support its argument that such an omission amounted to a fraudulent misrepresentation that would justify cancellation of the mark. With respect to conversion, TIPA argued that Hoerbiger, by filing the UDRP action, had “locked” the domain name, thereby committing conversion. The court disagreed noting that TIPA had not shown that Hoerbiger improperly initiated the UDRP action with respect to the horbiger.com domain name. With respect to trespass to chattels, the court rejected this claim on the same basis as it rejected the conversion claim noting the lack of any evidence of damage to the domain name or that TIPA is even currently the owner of the name. Finally, with respect to TIPA’s claim for tortious interference with a contract and/or peaceful use and enjoyment of property, the court agreed with Hoerbiger that TIPA did not show that it suffered any damage as a result of Hoerbiger’s efforts to gain ownership of the horbiger.com domain name

With that, the court entered summary judgment in favor of Hoerbiger on its cybersquatting counterclaim, dismissed with prejudice all of TIPA’s claims against Hoerbiger, and held over for trial Hoerbiger’s remaining counterclaims for federal trademark infringement, unfair competition, and trademark dilution as well as its state law claims.

Andre Agassi and Steffi Graf Play Doubles Match Against Cybersquatters

Andre Agassi & Steffi Graf

Looks like Andre Agassi and Steffi Graf have finally decided to go after their .COM domain names nearly 8 years after the names were registered by other parties. And as long as they are taking legal action, why not go after the registrants of their names with the .NET and. INFO domain name registries.

On May 12, 2009, both Agassi and Graf filed similar cybersquatting lawsuits in the U.S. District Court for the District of Nevada. See Agassi Enterprises, Inc. v. andre-agassi.com et al, Case No. 09-cv-00849 (D. Nev.) and SGF License, LLC v. steffigraf.com et al, Case No. 09-cv-00850 (D. Nev. Filed). A copy of the Andre Agassi complaint can be downloaded here.

Agassi Enterprises, Inc. (“AEI”), which owns the right to use Andre Agassi’s names and related intellectual property pursuant to an employment agreement it has with Andrew Agassi since 1994, sued three domain names containing the name Andre Agassi (andreagassi.com, andreagassi.net and andre-agassi.info). [Note: While the case caption indicates the names at issue are andre-agassi; the text of the complaint indicates that the .COM and .NET domain names at issue are without a dash]. Similarly, SGF License, LLC, Graf’s intellectual property licensing company, sued three domain names containing the name Steffi Graf (steffigraf.com, steffigraf.net and steffigraf.info).

In the Agassi case, the andreagassi.com domain name was registered with Tucows, Inc. by Standard Bearer Enterprises Limited, a company in St. Johns, Antigua, on October 4, 2001; the andreagassi.net domain name was registered with GoDaddy.com, Inc. by Garvin Advertising Agency, a company in Panama City, Florida, on February 22, 2009; and the andre-agassi.info domain name was registered with GoDaddy.com, Inc. by DomainsByProxy, a private domain registration service company in Scottsdale, Arizona, on June 3, 2007.

In the Graf case, the steffigraf.com domain name was registered by a company named Marketing Express on June 1, 2001; the steffigraf.net domain name was registered by Domain Admin on March 9, 2009; and the steffigraf.info was registered by Alexander Shadikhan on March 31, 2009.

Interestingly, the Las Vegas power couple, rather than filing separate actions against each of the registrants, opted instead to file “in rem” actions against the domain names themselves.

Under 15 U.S.C. § 1125(d)(2)(A), the owner of a registered trademark or mark that is protected under 15 U.S.C. § 1125(a) or 1125(c) may file an in rem civil action against a domain name in the judicial district in which the domain name registrar, domain name registry, or other domain name authority that registered or assigned the domain name is located if the court finds that the owner is not able to obtain personal jurisdiction over the domain name registrant or the owner was not able to find the domain name registrant after sending a notice to the registrant’s postal and e-mail address that the registrant provided to the domain name registrar. For purposes of this type of in rem action, the situs of the domain name is considered to be the judicial district in which the domain name registrar, registry, or other domain name authority that registered or assigned the domain name is located or alternatively the court in which the registrar of the domain name deposits a registrar certificate giving the court control and authority regarding the disposition of the registration and use of the domain name. See 15 U.S.C. § 1125(d)(2)(C).

In the Agassi case, AEI would certainly not be able to obtain personal jurisdiction over a company in Antigua, so it makes sense to file an in rem action against andreagassi.com. However, there is no indication that AEI could not obtain personal jurisdiction over the registrants in Florida and Arizona by filing lawsuits in those states. And yet those domain names were included in this Nevada action. AEI even recognizes that the domain names are not interactive, and therefore, there is no personal jurisdiction over these domain names in Nevada.

Based on the complaint’s jurisdictional statement, AEI is apparently hoping that once it serves the complaint on the domain name registrars, that the registrars will willingly sign Registrar Certificates, which AEI can then deposit with Nevada district court, giving the court control over the domain names (thereby placing the situs of those domains in Nevada). In other words, if AEI can get the situs of the domain names moved to Nevada, then the court will have personal jurisdiction over them.

Of course, not all domain name registrars are so willing to sign over a registrar certificate unless the case is filed in rem in the judicial district in which the domain name registrar or domain name registry is located (none of the registrars of the Agassi domain names are located in Nevada and the .COM registry and .NET registry, both with Verisign, are in Virginia and the .INFO registry, Affilias, is in Ireland).

Moreover, at least one court of appeals has held that §1125(d)(2)(C) does not confer an independent basis of jurisdiction. See Mattel, Inc. v. Barbie-Club.com, 310 F.3d 293 (2nd Cir. 2002):

No scenario consistent with this statutory scheme, however, would permit an ACPA plaintiff to establish in rem jurisdiction by filing a complaint in a judicial district not contemplated by subsection (d)(2)(A) and then unilaterally seeking to effect a transfer of legal situs to that district. . . . [T]he ACPA's basic in rem jurisdictional grant, contained in subsection (d)(2)(A), contemplates exclusively a judicial district within which the registrar or other domain-name authority is located. A plaintiff must initiate an in rem action by filing a complaint in that judicial district and no other. Upon receiving proper written notification that the complaint has been filed, the domain-name authority must deposit with the court documentation "sufficient to establish the court's control and authority regarding the disposition of . . . the domain name," as required by subsection (d)(2)(D). This combination of filing and depositing rules encompasses the basic, mandatory procedure for bringing and maintaining an in rem action under the ACPA. Subsection (d)(2)(C) contributes to this scheme by descriptively summarizing the domain name's legal situs as established and defined in the procedures set forth in subsections (d)(2)(A) and (d)(2)(D).

Id. at 305-306 (emphasis added).

In other words, just because a registrar certificate gets filed in a court does not mean that the court has jurisdiction to hear the case.

So while I think it's a very valid question to ask why the jurisdiction of Nevada was chosen for this "in rem" cybersquatting action based on the above, the real question in my mind is what took them so long to go after the .COM cybersquatters in the first place?

The Cupcakery Sues Former Employee for Trademark Infringement

On May 5, 2009, The Cupcakery, LLC (“The Cupcakery”) filed a trademark infringement lawsuit against Sift: A Cupcakery, LLC (“Sift”) and owner Andrea Ballus in the U.S. District Court for the District of Nevada. See The Cupcakery, LLC v. Ballus et al, Case No. 09-cv-00807 (D. Nev.). A copy of the complaint (without exhibits) can be downloaded here.

The Cupcakery is a specialty bakery specializing in baking and selling gourmet cupcakes. The company has two locations in Las Vegas along with one in Texas.

According to the complaint, The Cupcakery initially began using the mark THE CUPCAKERY in December 2005 in connection with selling gourmet cupcakes through “special order.” The Cupcakery opened its first retail store in January 2006.

The Cupcakery alleges that it hired Ballus for a part-time position in one of its Las Vegas stores on or about January 8, 2008, at which time Ballus executed a Confidentiality Agreement which included a non-disclosure provision and non-compete provision. Of course, the complaint later alleges that Ballus, upon quitting her job two months later, removed the signature page of this Agreement from her employee files, which suggests that The Cupcakery does not possess a fully executed copy of such agreement. [ed.— hmmmm.]

Sometime around February 8, 2008, Ballus purportedly filed Articles of Organization for SIFT: A CUPCAKERY, LLC with the California Secretary of State. On February 20, 2008, Ballus also registered the domain name www.siftcupcakery.com (which now hosts a webpage advertising Sift’s gourmet cupcakes).

The Cupcakery claims that Ballus used her employment to get access to its trade secrets (cupcake recipes, business development and marketing strategies, and customer lists) and upon quitting, opened up her own gourmet cupcake business in Cotati, California.

Picture of Sift: A Cupcakery in Cotati, California

(Photo Credit: Elliot Kallen)

The Cupcakery also alleges that Ballus took the job with The Cupcakery under false pretenses in order to obtain these trade secrets so that she could develop her own gourmet cupcake business. The Cupcakery cites to a blog -- cupcakeaday.com – where Ballus supposed discussed her plans to open a cupcake business as early as December 2007. (Click here for her post where she embarks on her “massive mission to open my very own cupcake shop” and here to read in her own words the origin of the Sift name).

Most importantly, however, is that on August 18, 2008, Sift filed an application with the PTO to register the mark SIFT:A CUPCAKERY for “Retail bakery shops; Retail stores featuring cupcakes” (claiming date of first use April 2008).

Who knows when The Cupcakery discovered Sift’s pending application or whether the timing is a strange coincidence, but on September 8, 2008, The Cupcakery filed four separate trademark applications of its own – two for the word mark THE CUPCAKERY (for retail and online retail services and cakes and cupcakes) and two for the THE CUPCAKERY logo (for retail and online retail services and cakes and cupcakes). The “cakes and cupcakes” applications claim a date of first use as December 2005 while date of first use for the “retail and online retail services” is January 2006.

Of course, with Sift’s earlier filing date, Sift’s application was passed to publication first. When Sift’s application was published for opposition, The Cupcakery filed a timely opposition. See The Cupcakery, LLC v. Sift: A Cupcakery LLC, Opposition No. 91188833 (T.T.A.B. Filed February 12, 2009).

In the instant complaint, The Cupcakery squarely attacks Sift’s application on the basis of fraud, in particular, the declaration section of Sift’s application stating that “no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive.” The Cupcakery maintains that Sift (through Ballus) was aware of The Cupcakery’s senior use of THE CUPCAKERY when it made this declaration.

The Cupcakery’s causes of action are (1) Trademark Infringement under 15 U.S.C. § 1125(a) [Note: The Complaint actually cites 1125(c), but this is likely a mistake since no mention of trademark dilution is made and any claims to fame would be laughable]; (2) Unfair Competition under 15 U.S.C. § 1125(a); (3) Common Law Trademark Infringement; (4) Deceptive Trade Practices under Nevada law (N.R.S. § 598.0903, et seq.); (5) Breach of Contract; (6) Fraud; (7) Misappropriation of Trade Secrets under Nevada law (N.R.S. § 600A.030 et seq.); and (8) Intentional Interference with Prospective Economic Advantage

Vegas™Esq. Comments:
By moving the case out of the TTAB and into the federal courts (and adding in additional causes of actions like fraud, trade secret misappropriation and breach of contract), The Cupcakery is able to intensify the pressure against Sift to abandon its application, and thereby allowing The Cupcakery's applications to proceed to registration.

At first, the word “cupcakery” seems somewhat suggestive – a unique play on the words cupcake and bakery. However, with the explosive growth of these specialty “cupcake” stores, several other “cupcakeries” have opened up in different parts of the country. Just a quick internet search revealed the following third parties using the word “cupcakery” to identify their cupcake store:

• http://www.sibbyscupcakery.com/
• http://www.acupcakery.com/
• http://ourcupcakery.com/
  

And at least one company (with stores in St. Louis, MO and Knoxville, TN) is using the identical mark as The Cupcakery)

So would most consumers really associate the word "Cupcakery" with a single source -- or more likely a merely descriptive term describing a cupcake bakery?

And could the presence of these other stores also impact The Cupcakery’s own trademark applications, which also included declarations by The Cupcakery that “no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive”?

While “cupcakery” may have been a unique word at one time, because The Cupcakery did not pursue trademark protection early (assuming that the company was the first one to use the phrase – a fact I have not verified), such oversight may have resulted in the word “cupcakery” joining the general lexicon as a word identifying a “cupcake bakery” rather than a word identifying a single source of goods and services.

It will be interesting to see if The Cupcakery, when and if it is able to get beyond Sift’s application and get their marks registered (thereby giving them prima facie evidence of the nationwide exclusive rights to the term), will attempt to start a nationwide campaign (a la Sprinkles) to stop other companies from using the word “CUPCAKERY” in connection with a cupcake bakery. Of course, registration is only prima facie evidence – and such marks can still be challenged on the basis of being merely descriptive (and not showing of acquired distinctiveness).

But without any trademark registrations, The Cupcakery must rely upon its common law rights, which given the fact that the company only has three stores (two in Vegas and one in Texas) and a website [Comment: and just because a website is accessible nationwide doesn’t mean your reputation is nationwide], would appear to give the company a limited zone of protection (certainly its zone of actual market penetration, namely Las Vegas and the Texas area where it has its stores). But can The Cupcakery claim that its zone of reputation extends outside these areas or show concrete evidence of a zone of natural expansion reaching into California or the other areas of the countries where “cupcakeries” are opening up?

Iron Maiden Sues Over Comic Book Name

Iron Maiden's Eddie the Head

Daily Breeze reports on the trademark infringement lawsuit filed by the heavy metal group Iron Maiden against the creators of a comic book entitled “Iron and the Maiden” (pictured below) and promoted on the website http://www.ironandthemaiden.com/. See Iron Maiden Holdings Limited v. Iron and the Maiden, LLC, Morgan Rose, LLC, and Jason Rubin, Case No. 09-cv-3102 (C.D. Cal. Filed May 4, 2009). A copy of the complaint is available here.

Iron Maiden Holdings Limited (“Iron Maiden”) holds three federal trademark registrations for the IRON MAIDEN mark (for Clothing, Paper products (decals, posters, etc.), and Live Entertainment Services).

Iron and the Maiden Comic Book Cover

The lawsuit is actually the spillover of an ongoing opposition proceeding that has been pending at the Trademark Trial and Appeal Board since 2007. Iron and the Maiden, LLC applied to register the mark IRON AND THE MAIDEN with the PTO (for comic books, video games, and providing a website with information on comic books and games). When the application was published for opposition in June 2007, Iron Maiden filed an opposition, which has been pending since October 2007 and suspended today with the filing of the above civil action. See Iron Maiden Holdings Limited v. Iron and the Maiden, LLC and Morgan Rose, LLC, Opposition No. 91179834 (T.T.A.B. Filed October 2, 2007).

Las Vegas Entertainer Danny Gans Dies at Age 52

Danny Gans (1956 - 2009)

Las Vegas mourns the shocking and untimely death of modern Vegas legend Danny Gans. Gans reportedly died in his sleep sometime around 3 a.m. this morning. News accounts of his passing are posted on KVBC and TMZ. He was 52.

The cause of death is currently unknown and Gans had no reported health problems. TMZ is reporting that a 911 phone call was made by a family member around 3:44 a.m. about a 52 year man who was having trouble breathing. When paramedics arrived, Gans had already passed away.

Our thoughts go out to his family (his wife and three children) and his other family and friends.