This case began back in 2007 with Viacom’s initial lawsuit against YouTube alleging $1 billion in damages. Viacom argued that YouTube provides a service to internet users by doing more than merely allowing them to post and distribute copyrighted materials. Viacom’s complaint stated;

“YouTube itself commits the infringing duplication, distribution, public performance, and public display of Plaintiffs’ copyrighted works, and that infringement occurs on YouTube’s own website, which is operated and controlled by Defendants, not users.”

Judge Stanton’s summary judgment ruling in favor of Google / YouTube was sensitive to the interaction between the DMCA and internet service providers (ISPs). After iterating that to comply with the requirements of the DMCA an ISP need only remove infringing content once such content has been brought to its attention,  he stated, “the provider must know of the particular case before he can control it,” and “the provider need not monitor or seek out facts indicating such activity.” Accordingly, the district court’s ruling effectively protected Google and YouTube from liability so long as they pull down infringing material, when notified, to remain in compliance with the guidelines of the DMCA.

Shortly after the Google and YouTube received summary judgment at the district court level, both Viacom and Google released statements regarding the ruling;

Plaintiff Viacom said in an e-mailed statement that it plans to appeal the ruling;

“We believe that this ruling by the lower court is fundamentally flawed and contrary to the language of the Digital Millennium Copyright Act, the intent of Congress, and the views of the Supreme Court as expressed in its most recent decisions.”

Viacom went on to elaborate that it was disappointed about the district court’s ruling, but “confident we will win on appeal.” The TV and movie producer stated that, “it is and should be illegal for companies to build their businesses with creative material they have stolen from others.”

Conversely, Defendant Google’s V.P. and general counsel, Kent Walker, commented in a blog posting that;

“The decision follows established judicial consensus that online services like YouTube are protected when they work cooperatively with copyright holders to help them manage their rights online.”

But aside from the decision being an established judicial consensus, Google said the summary judgment ruling was an important victory “for the billions of people around the world who use the web to communicate and share experiences with each other.”
Viacom filed papers to appeal the Southern District of New York ruling on 8/11/2010 with the U.S. Court of Appeals for the Second Circuit.

For more Internet law firm and attorney related information and background on the Viacom/Google/YouTube dispute, follow any of the links below;

• After Landmark Victories in the US Courts, Verizon Changes Tactics to Pursue Cybersquatters Through UDRP Arbitration Disputes
• Domains Dispute Alert: A federal court in Northern California has awarded $33.15 million in a default judgment to Verizon Communications in what the company is calling the largest cybersquatting judgment ever
• Verizon v Navigation Catalyst Cybersquatting Lawsuit Settled: NCS Continues to Cybersquat Trademark Protected Domains
• Viacom Loses UDRP Challenge to StansDad.com
• Internet Law Update: Personal Data Protected By Google In Deal With Viacom
• Viacom Appeals YouTube Copyright Infringement Case

The Second Circuit’s Chloé v. Queen Bee opinion can be found here.

Interestingly, it appears that the single shipment of the counterfeit Chloé handbag was a ploy. The sale was actually orchestrated by Chloé’s attorneys as a “trap sale” to open up Defendants Queen Bee of Beverly Hills and its principal Simone Ubaldelli to claims of

The district court found; that even though Chloé provided evidence that Defendants had made numerous sales of other (non-Chloé) goods to customers in New York, that such evidence was insufficiently related to Chloé’s claims of trademark infringement and counterfeiting as to subject Queen Bee and its principal Simone Ubaldelli to personal jurisdiction in New York. Further, the district court found that declined to exercise jurisdiction over Defendants based on the single shipment from California to New York.

Reversing the D.C.’s ruling, the Second Circuit’s three Judge panel consisting of Raggi and Hall, Circuit Judges, and Carman, Judge for the U.S. International Trade court; found that Ubaldelli’s conduct in the single act of shipping an item into New York, combined with the substantial business activity of Queen Bee in that state, was sufficient to subject both defendants to personal jurisdiction in New York courts. The panelists found that New York’s long-arm statute, N.Y. C.P.L.R. § 302(a) (McKinney 2001), and with due process.

This appellate opinion reversed the district court’s refusal to exercise personal jurisdiction over Defendant Queen Bee in the D.C.’s ruling, Chloé v. Queen Bee of Beverly Hills, LLC, 571 F.Supp.2d 518 (S.D.N.Y.2008).

It is also noteworthy to Internet law firms and lawyers that Chloé also attempted to argue that personal jurisdiction was proper under the Calder v. Jones “effects test,” as articulated by the Supreme Court. Calder’s “effects test” would submit Defendants to personal jurisdiction on the trademark infringement claim on the basis that the claims is a tort and its effects will be felt in New York where the ‘Chloé’ trademark owner is located. However, the Second Circuit declined to decide the jurisdiction issue under this theory.

Conclusion, quoting the Second Circuit opinion;

“In light of our holding that Chloé “has made a threshold showing of minimum contacts at the first stage of the inquiry,” Metro. Life, 84 F.3d at 568, Ubaldelli’s generalized complaints of inconvenience arising from having to defend himself from suit in New York do not add up to “‘a compelling case that the presence of some other considerations would render jurisdiction unreasonable.’” id. (quoting Burger King, 471 U.S. at 477). Consequently, we hold that asserting jurisdiction over Ubaldelli comports with “traditional notions of fair play and substantial  justice,” see Int’l Shoe, 326 U.S. at 316, such that it satisfies the reasonableness inquiry of the Due Process Clause.” at 23, 24

Check below for other related analyses examining personal jurisdiction over defendants in intellectual property claims;

• Posting Defamatory Comments on the Internet Could Subject You to Personal Jurisdiction in Another State
• Intent to Deceive and False Marking, a New Standard?

Originally Adventists brought a trademark infringement lawsuit against McGill in the U.S. District Court for the Western District of Tennessee at Jackson for his use of protected marks belonging to Adventists in advertising and promoting his breakaway church. In response, McGill brought a motion to dismiss based on the Free Exercise Clause and the Religious Freedom Restoration Act (RFRA), which was denied by the district court. Subsequently, and after McGill’s repeated refusal to appear for a court-ordered mediation to which he had initially consented, the district court entered default judgment against him and granted partial summary judgment in favor of Adventists.

The full Sixth Circuit opinion for this case can be found here (General Conference Corp. et al. v. McGill, No. 09-5723 (6th cir. August 10, 2010)).

In entering its order finding trademark infringement, the district court made reference to the following list of factors that should be considered in determining whether a third-party’s use of a trademark will cause a  likelihood of confusion among the public (finding the majority of factors heavily in favor of Adventists);

1) the strength of the senior mark;
2) relatedness of the goods and services;
3) the similarity of the marks;
4) evidence of actual confusion;
5) the marketing channels used;
6) likely degree of purchaser care;
7) the intent of the defendant in selecting the mark; and
8 ) the likelihood of expansion of the product lines.” Id. at 19

McGill then instituted this appeal in the Sixth Circuit asking the court to: carve out a new exception under trademark law for disputes involving religious use of intellectual religious property, find that the Religious Freedom Restoration Act applies only in suits against the government, find the ‘Seventh Day Adventist’ trademark invalid, or otherwise find that the mark is unlikely to cause confusion among the public because the district court misjudged the above factors based on the identity of the relevant public.

However, McGill’s requests were roundly declined by the court of appeals. The three Circuit Judge panel, comprised of Kennedy, Moore, and Sutton, denied McGill’s request to overrule the district court’s decision and instead affirmed the district court’s finding of partial summary judgment in favor of Adventists.

Writing the Sixth Circuit’s opinion, Circuit Judge Karen Nelson Moore affirmed the district courts finding that McGill’s use of the ‘Seventh Day Adventist Church’ trademark would lead to a likelihood of confusion, she stated;

“Even taking the relevant public as “Christians and, more specifically, Adventist Christians (that is, those who believe in the nearness of the second coming of Christ),” Stocker, 1996 WL 427638, at *11, 17, McGill has adduced insufficient evidence to show that this group would understand “Seventh-day Adventist” as referring to certain religious beliefs rather than to the plaintiffs’ church.” Id. at 19

Concluding, the Sixth Circuit addressed relatedness between the marks and likelihood of confusion before affirming the district court’s judgment;

“We address McGill’s main challenge to the district court’s analysis, that it misjudged the factors in light of the identity of the relevant public. McGill argues that the relevant public—those who believe in the imminence of Christ’s return and that the Sabbath should be observed on Saturday—are so discerning that there is a genuine issue of material fact about the likelihood that they would confuse McGill’s church for the plaintiffs’ church. But while it may indeed be hard to envision a person mistakenly joining the wrong church, it is not at all difficult to imagine a person consuming McGill’s published materials and ascribing his teachings to the General Conference, especially in light of the relatedness of the parties’ services and similarity of the marks. Accordingly, we agree that the plaintiffs were entitled to summary judgment on the likelihood of confusion, and we uphold the district court’s judgment as to the mark “Seventh-day Adventist.” Id. at 20

For more information on this case and related trademark-infringement lawsuits;

• 6th Circuit Upholds Trademark Infringement Claims By Seventh Day Adventist Church
• Denying ANIPs Motion to Dismiss in Trademark Infringement and Cybersquatting Lawsuit Brought to Protect the Intel Trademark
• Google Sued Again For Allowing Third Parties to Use Trademarks as Part of Keyword Advertising
• Lexus Vehicle Auto-Brokerage Service Protected by Fair Use Doctrine in an Appeal from Lawsuit Brought by Toyota
• Trademark-Infringement Dispute Over BLACK SABBATH trademark

The full opinion; Advertise.com, Inc., v. AOL ADVERTISING, INC., FKA Platform-A, Inc.; AOL INC., Case No. 10-55071 (9th Cir. August 3, 2010).

Defendants in this suit are AOL ADVERTISING, INC., FKA Platform-A, Inc.; and AOL INC., (collectively as ‘Defendants’ or ‘AOL’). AOL was the original plaintiff in this lawsuit and at the district court level it filed a complaint alleging trademark infringement against Advertise.com in the Eastern District of Virginia. That case was transferred to the Central District of California where District Judge Valerie Baker Fairbank entered a preliminary injunction against Advertise.com.

At issue in this appeal is the whether the district court correctly determined that AOL was likely to succeed on the merits, more specifically, whether the district court correctly determined that ‘ADVERTISING.COM’ is a descriptive mark (and thus protectable) rather than a generic term.

Because ADVERTISING.COM is a registered trademark, “a presumption of validity places the burden of proving genericness upon the defendant,” Advertise.com. Filipino Yellow Pages, Inc. v. Asian Journal Publ’ns Inc., 198 F.3d 1143, 1146 (9th Cir. 1999).

Importantly, the court placed heavy consideration on the fact that both Advertise.com and AOL offer services that fall under the genus of “online advertising” or “internet advertising.” This acts as a strong bar to any claim that Advertise.com could make alleging that its use of ‘Advertise.com’ does not create consumer confusion between it and Defendant on appeal AOL’s ‘ADVERTISING.COM’ registered trademark. Likely with this in mind, Advertise.com did not even contest whether its use of the ‘www.Advertise.com’ and Defendant’s ‘www.Advertising.com’ were confusingly similar. The sole issue on appeal is over the validity of the permanent injunction.

A quick aside to the history of AOL’s ‘ADVERTISING.COM’ trademark;

AOL is the current federally registered trademark owner of marks covering specific stylized representations of ‘ADVERTISING.COM.’ However, back when AOL’s applications for those registrations were pending before the United States Patent and Trademark Office (USPTO), the USPTO requested that AOL disclaim the standard text version of ‘ADVERTISING.COM’ to obtain registration of the stylized representations of that term. AOL balked at this order instead of complying. It maintained that although it did not claim exclusive rights to the term ‘ADVERTISING,’ the standard texts version of ‘ADVERTISING.COM’ was sufficiently distinctive and protectable. Apparently the USPTO accepted this line of reasoning as it eventually issued the registrations without its requested disclaimer of the standard text version.

On appeal, Advertise.com argued the district court abused its discretion in ordering the injunction because the text mark ‘ADVERTISING.COM’ is generic

Generic v. Descriptive marks;

Writing the opinion for the Ninth Circuit Court, Judge B. Fletcher noted the differences between generic and descriptive trademarks and stated;

“Generic terms are those that refer to “the genus of which the particular product or service is a species,” i.e., the name of the product or service itself. Id. at 1147. “To determine whether a term [is] generic, we look to whether consumers understand the word to refer only to a particular producer’s goods or whether the consumer understands the word to refer to the goods themselves.” Yellow Cab Co. v. Yellow Cab of Elk Grove, Inc., 419 F.3d 925, 929 (9th Cir. 2005). A descriptive mark describes the qualities or characteristics of a product. See KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 408 F.3d 596, 602 (9th Cir. 2005). Generic terms cannot be valid marks subject to trademark protection, whereas a descriptive mark can be valid and protectable if it has acquired “secondary meaning.” Filipino Yellow Pages, 198 F.3d at 1147. “Whether a mark is generic is a question of fact.” Yellow Cab Co., 419 F.3d at 929 (quotation marks omitted).”

“With this context in mind, we consider whether ADVERTISING.COM conveys only the “genus of which [AOL’s] particular [service] is a species” or whether it is descriptive because it “directly describe[s] the qualities or features of the product.” One Indus., LLC v. Jim O’Neal Distrib., 578 F.3d 1154, 1164 (9th Cir. 2009) (quotation marks omitted).”

After this background, Judge B. Fletcher began consideration of the descriptive v. generic quality of AOL’s ‘ADVERTISING.COM’ mark and noted that the first step is to consider the impression conveyed by “advertising” and “.com” taken separately. Fletcher then conceded that “advertising” is generic and that “.com” is also generic and refers to any online commercial organization or business otherwise connected to the internet. The Judge assigned significant weight to the finding that separately, the terms are generic.

The Ninth Circuit then considered whether when joined together, “advertising” and “.com” would result in a distinctive mark or whether continued evidence of genericness would rebut the presumption of validity (noted above, ‘ADVERTISING.COM’ is a registered trademark and as such has a presumption of validity);

After considering the joined terms under the “who-areyou/what-are-you” test, Fletcher stated that the generic name of the product answers the question and this strongly suggests that ‘ADVERTISING.COM’ is generic.

Other support for a finding of genericness comes from evidence of how the mark has been incorporated into other domain names. Fletcher writes that “Advertise.com points to thirtytwo separate domain names that incorporate “advertising.com,” such as “travel-advertising.com,” “aplusadvertising.com” and “domainadvertising.com.”

Concluding, Fletcher writing for the Ninth Circuit wrote;

“It is not inconceivable but certainly highly unlikely that consumer surveys or other evidence might ultimately demonstrate that AOL’s mark is valid and protectable. However, on the record before us, we conclude that the district court abused its discretion in determining that Advertise.com could not meet its burden of rebutting the presumption of validity and that AOL was, therefore, likely to prevail on the merits.”

Accordingly, the Ninth Circuit reversed the district court’s ruling and vacated the preliminary injunction enjoining Advertise.com from using “the designation and trade name ADVERTISE.COM or any other designation or trade name that is confusingly similar.”

More information on this case and trademark registration and infringement laws in general can be found here;

CourtHouseNews – Circuit Says AOL Doesn’t Own Advertise.com

How to Trademark Brands, Slogans and Names

Trademark Registration Attorneys – Traverse City, Michigan

Trademark-Infringement Dispute Over BLACK SABBATH trademark Settled Between Ozzy Osbourne and Tony Iommi

Typosquatting and Cybersquatting Dispute Over ROK Trademark Owner and Maker of Boat Stands

Go here to play Greenpeace’s parody game, “Turtle vs Tata”

Or here to revert back to the iconic original Pac-Man game in a Flash version

Aside from being a funny twist on a class game, Greenpeace’s “Turtle vs Tata” is also a part of a much larger campaign against Tata Steel and their deep-sea port that is being set up along with L&T at Bhadrak in Orissa. Greenpeace has gotten involved to protest against this Tata project, known as the Dharma Port Project (reminiscent of LOST anyone?), primarily to protect the interests of the Olive Ridley sea turtle population, the smallest extant sea turtle in the world. The Olive Ridley turtles maintain their instinctual nesting sites only 15 kilometres from the location of the location of Tata’s Dharma Port Project.

Greenpeace has been adamantly demanding to conduct an independent environmental study of the Bhadrak region despite the fact that Tata Steel obtained environmental clearance for the site in 1999 and maintains that it has not violated any provisions of the Forest Conservation Act. Despite Tata Steel’s assurances that it isn’t doing anything to harm the environment or the Olive Ridley turtle population, Greenpeace wishes to conduct its own survey to find out the repercussions of dredging in the area and the effects the project will have on the rich bio-diversity of the area.

Thus Greenpeace spawned the “Turtle vs Tata” game as a part of its campaign against Tata Steel to protect the Olive Ridley turtles. However, the seemingly innocent “Turtle vs Tata” game may have been a wrong step for Greenpeace. Tata Steel has brought a lawsuit against the non-governmental environmental organization alleging defamation and trademark infringement and asking for $2.1 million in damages.

On the Greenpeace’s webpage hosting “Turtle vs Tata”, they provide a brief background synopsis of the game while somewhat obliquely referencing the political dispute between Greenpeace (on behalf of the Olive Ridley turtles) and the Tata Steel (the ‘TATA demons’);

“TATAs Dhamra port could be the beginning of the end for Gahirmatha’s turtles. Your objective is simple – get the turtles to eat as many of the white dots – jellyfish and other sea creatures – while dodging the TATA demons! If you eat a power pill, you will be gifted with super-turtle powers to vanquish the demons of development that are threatening your coastal home!

Of course, real life isn’t quite so rosy for the turtles, and they need your help to keep fighting for a safer future!”

The trademark infringement and defamation lawsuit;

Tata Steel’s holding company, Tata Sons, filed suit on July 16th in the Delhi High Court alleging infringement of their trademarked logo, a ‘T within a circle’, and defamation.

Last Tuesday, Delhi High Court Justice Ravindra Bhat gave Greenpeace additional time (until August 12) to file their reply to the complaint. Also, Justice Bhat in what he made clear was merely a suggestion and not a directive, suggested that Greenpeace doesn’t have to change the name of its “Turtle vs Tata” game but it should stop using the Tata trademarked logo.

The Intellectual Property specialist law firm Anand and Anand is representing Tata Sons and in a press statement the firm said;

“Greenpeace has unauthorisedly used the Tata trademarks without the permission of Tata Sons, thereby infringing their trademark. Greenpeace herein has not only infringed the trademark rights of Tata Sons, but is also maligning the reputation of Tata Sons.”

Greenpeace is being represented by the Intellectual Property specialist lawyer Saikrishna Rajagopal, Partner of Saikrishna & Associates. In a statement to Bar & Bench he confirmed that he is representing the non-governmental environmental organization but he refused to comment specifically on the case, stating;

“In my opinion it is inappropriate to discuss the case while it is sub-judice. We will articulate our arguments in court.”

Also in a statement to the Bar & Bench, Ashish Fernandes, an Oceans Campaigner for Greenpeace said;

“We plan to present the history of our campaign to support our arguments. We will use international precedents to show that our methods are a valid criticism against the project.”

For related articles on this impending case;

Game over for Greenpeace? Tata files defamation and trademark infringement suit: Anand and Anand & Saikrishna Rajgopal in Delhi High Court

The two are being charged with trademark infringement and two counts of illegal sale of goods bearing counterfeit labels, each count of which carries a maximum sentence of five years in jail and $10,000 in fines.

WLBT-tv quoted Lt. Jeffery Scott, public information officer with the Hinds County Sheriff’s Department, saying, “by the time you take it and get it home, you find you’ve purchased a block of wood, you may as well throw it in the fireplace. It’s no good.”

The two men are now being held at the Hinds County Detention Center in Raymond. As of yet no bond has been set.

For more information on this story;

Men Arrested Selling Wood As Laptops

2 accused in laptop, camera box scam

Police: 2 men tried to sell wood blocks as laptops

Procedural History;

The district court found trademark infringement and ordered the defendants to cease using the domain names (buy-a-lexus.com and buyorleaselexus.com) and enjoined them from future use of the ‘LEXUS’ trademark in connection with any other domain name.

On appeal, the U.S. Court of Appeals for the Ninth Circuit vacated and remanded the district court’s decision. It held that the district court’s injunction was overbroad because the court failed to properly apply the nominative ‘fair use’ doctrine.

As an Internet Lawyer will tell you, the ‘fair use’ doctrine provides that any use of a third party’s trademark does not constitute infringement if; the plaintiff’s product or service is not readily identifiable without use of the mark, no more of the mark is used than is necessary, and the use of the mark does not falsely suggest a sponsorship or endorsement.

Holding;

The Ninth Circuit Court of Appeals held, “at the very least, the injunction must be modified to allow some use of the Lexus mark in domain names by the Tabaris.”

The July 20, 2010 article “Use of another’s trademark in domain name may be permissible as a nominative fair use” provides a useful tip to Website owners wishing to employ the use of a third party trademark without incurring a trademark infringement lawsuit;

“TIP: When using a third party’s trademark to refer to the third party’s goods or describe your own goods, be sure that the goods are not readily identifiable without use of the mark, that you use no more of the mark than necessary, and that you do not falsely suggest a sponsorship or endorsement by the trademark holder.”

For important related articles on the fair use doctrine;

Trademark Fair Use: Some Guidelines When Making a Nominative Use of Another’s Trademark

TC Attorney, The Fair Use Defense

A&E Denied Motion To Dismiss Claim Of Copyright Fair Use For Use of Song

Copyright Litigation Update: Fair Use Parody of Song Results in Lawsuit Dismissal

However, with increasing prevalence these ‘free download’ links are being used as traps and can be found throughout myriads of Web pages hosted by German servers.

Recognizably, one of the familiar companies hosting freeware or Open Source Software (F/OSS) that is being used on these ‘trap’ fraudulent Websites is the popular internet browser Firefox.

On its Website, Firefox boasts that “switching from IE to Firefox is quick and easy – a safer, faster, more advanced Web is only a few clicks away!”

Unfortunately, this slogan may be a false promise to Web-users browsing German Websites, sites that are designed to entice Web-users to fall prey to traps relying on consumers’ trust built up in FIREFOX brand. In her article “A trap for the speedy FIREFOX? Fighting fraudulent websites offering downloads of Mozilla FIREFOX software” Anthonia Zimmermann outlined the way these Firefox traps work;

“The traps follow a uniform pattern: A Google search for “FIREFOX” leads to search results that redirect to a website offering various well-known F/OSS programs for download. The user is prompted to make a simple quick mouse-click: “DOWNLOAD NOW”, alongside an image of the well-known FIREFOX logo. Users hardly ever notice the hidden small print with information on the price and duration of the contract. They simply agree to the website’s terms and conditions by mouse-click as a matter of routine. But therein lies the trap: The download of a software program supposedly free of charges turns out to be a two-year subscription for a software database at a cost of about 100 Euros p.a. The fraudulent scheme is highly profitable, with some websites issuing as many as 170,000 invoices per week – equaling a weekly invoicing amount of 16.32 million Euros. Even if only a fraction of misled consumers actually pay, this leaves a generous profit.”

Firefox is taking steps to cut down on the prevalence of FIREFOX software available for download on these German hosted ‘trap’ sites;

Mozilla is fighting against these traps using FIREFOX software. As Zimmermann pointed out, Firefox’s parent company, the Mozilla Foundation, has successfully fought back against several subscription traps in Germany through preliminary injunctions based on trademark infringement as well as on unfair competition practice.

Internet Lawyer and Trademark Infringement Attorneys alike represent clients in the fight against fraudulent Websites and Internet scams including these German ‘trap’ free download links. For a free consultation, contact an Internet Lawyer today or call internationally toll free at 866-936-7447.

Robert Burck is the original Naked Cowboy and also the owner of the ‘NAKED COWBOY’ trademark. In a bid to enforce his brand rights, he sent a cease-and-desist letter to Sandy Kane, who has proclaimed herself as The Naked Cowgirl and who also began to appear in Times square donning a red, white and blue cowboy hat and matching bikini several years ago.

In an article posted on the New York Post earlier today, Sandy Kane is characterized as, “a fixture of the city comedy scene and former stripper famous for closing her act by lighting her breasts on fire.”

Apparently the dispute began when a failed Naked Cowboy / Naked Cowgirl duet soured the relationship between the two scantily clad cowboy enthusiasts. At some point Kane approached Burck with the idea of two collaborating on a duet and Burck was amenable to the idea but he stipulated that Kane would first need to sign a Naked Cowboy franchise agreement costing $5,000 a year or $500 a month.

Kane turned down the franchise agreement and instead recorded the song with a replacement that she dubbed “The Cowboy.” This was the catalyst for Burck to send a cease-and-desist letter to Kane requesting that she cease use of The Naked Cowgirl mark.

In regards to Burck’s case-and-desist letter, Kane didn’t sound very concerned and made note that she had yet to sell a single copy of the song, she said, “The song ain’t going anywhere anyways.” Speaking The Cowboy replacement, Kane said “It’s not like he’s Tim McGraw or Keith Urban.”

Somewhat surprisingly, Burck is offering a slew of merchandise and services utilizing the Naked Cowboy trademark. In terms of The Naked Cowboy merchandise, Naked Cowboy fans and enthusiasts can purchase all sorts of things including; a pre-release album download, a pre-release cd, Naked Cowboy autograph, Naked Cowboy t-shirts, a funny moments dvd, a Naked Cowboy cd with your name as the executive producer, and Naked Cowboy’s underwear.

What’s more surprising and somewhat comical (although some may be affronted by the notion that this somehow harms the sanctity of marriage- it just might) Burck offers his services as the Reverend Naked Cowboy for just $499 to couples wishing to get married in an undoubtedly memorable ceremony.

For related articles;

NYPost – Cowboy: ‘Naked’ rip-off!

On July 16th the Western District Judge Richard Jones issued a preliminary injunction against Discovery Communications, Inc. (Discovery) for their use of ‘Cake Boss’ in relation to the TV show on TLC.

The lawsuit is Masters Software, Inc. v. Discovery Communications, Inc., No. 10-405 (W.D. Wash. July 16, 2010) (Jones, J.). The plaintiff in this suit is Masters Software, Inc. (Masters), who also owns the federal registered trademark for CAKEBOSS.

The injunction is set to take effect after Cake Boss airs its third season and after Masters posts a $10,000 bond. Although this suit is still in its early stages, I found it very odd that Judge Jones is requiring plaintiff in the suit, Masters, to post a $10,000 bond before the injunction can take effect when Masters is also the party moving for the preliminary injunction.

Judge Jones issued the injunction using the following language;

“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.”

Providing reasoning for the injunction against Discovery, Judge Jones noted that there is substantial evidence of actual confusion between the TV show and the software company;

“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.”

Also in support of the injunction, Jones highlighted the fact that Discovery’s designation and use of the words ‘Cake Boss’ was not exactly in ‘good-faith’;

“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.”

Conclusion;

Based on the evidence of actual confusion and Discovery’s inability to provide evidence of its ‘innocent intent’ the court found this sufficient to presume Masters has suffered irreparable harm and to go on to postulate that Masters would also likely prevail on its trademark infringement claim. This was sufficient for Judge Jones to find that Masters was entitled to a preliminary injunction against Discovery for their use of ‘Cake Boss’.

The ‘CAKEBOSS’ / ‘CAKE BOSS’ federal trademarks;

A quick USPTO search reveals that ‘CAKEBOSS’ is registered to Masters Software, Inc., Serial No. 77722225. With the ‘CAKEBOSS’ mark first used in connection with commerce on May 1, 2007. Further, Masters’ ‘CAKEBOSS’ mark is class-identified to;

“Computer software for bakery business management, namely, financial, recipe, order, time, and contact management tools,” and “Providing online instruction in the field of baking cakes via a global computer network.”

Interestingly there is another federal trademark using the words ‘cake boss’ and although this mark appears to have nothing to do with baking, we may see a contest over its use of ‘cake boss’ in the future.  Cake Boss, LLC, is the trademark owner for ‘CAKE BOSS’ Serial No. 85065975. Cake Boss, LLC uses the ‘CAKE BOSS’ mark in relation to the class of;

“Distribution of music; distribution of musical sound recordings and video recordings; advertising and promotional services, namely, promoting the interests of musicians, songwriters, singers, musical performers and artists; retail of pre-recorded music and audio visual content, clothing, and general merchandise relating to musicians and musical artists.”

More on this story can be found here;

Court Imposes Injunction Against Producers of “Cake Boss” TV Show