Universal Tube & Rollform Equip. Corp. v. Youtube, Inc.

504 F. Supp. 2d 260 (N.D. Ohio 2007)

 

RULE:

Rule 1: The Lanham Act provides a cause of action for infringement of a mark that has not been federally registered. 15 U.S.C.S. § 1125(a). When evaluating a Lanham Act claim for infringement of an unregistered mark, courts must determine whether the mark is protectable, and if so, whether there is a likelihood of confusion as a result of the would-be infringer's use of the mark.

Rule 2: 15 U.S.C.S. § 1119 gives courts the power to order the cancellation of a registered mark (i.e. a mark whose application has already been approved). 15 U.S.C.S. § 1064 provides the requirements for a petition to cancel the registration of a mark.

Rule 3: Ohio recognizes a claim for the dilution of a senior user's mark against a junior user that uses a similar mark. The senior user's mark must be distinctive. Moreover, the mark must be well-known, at least in a particular product area or geographic region. While the federal Lanham Act uses the word, "famous," courts interpreting Ohio's common law action for dilution have used different, but related, adjectives to describe the requirements of a dilution claim.

Rule 4: To make a claim for trespass to chattel, one must have a possessory interest in the property in question. Trespass to chattel occurs through either dispossession of chattel or intermeddling with chattel in the possession of another.

Rule 5: In Ohio, nuisance involves interference with the private use and enjoyment of land.

Rule 6: To prevail on a claim for negligence, a plaintiff must show that a defendant owed the plaintiff a duty of care; that the defendant breached that duty of care; and that the plaintiff's injury was proximately caused by the defendant's breach. Such duty often arises by statute or ordinance, but it may also arise from the common law.

Rule 7: The Lanham Act, 15 U.S.C.S. § 1125(a), requires a plaintiff to prove (1) ownership of a specific mark in connection with specific goods or services; (2) continuous use of the mark; (3) establishment of secondary meaning if the mark is descriptive; and (4) a likelihood of confusion amongst consumers due to the contemporaneous use of the parties' marks in connection with the parties' respective goods or services.

Rule 8: To state a Racketeer Influenced and Corrupt Organizations claim, a plaintiff must allege that individual corporate officers committed, as part of their association with the company, some acts individually that involved a pattern of corrupt activity. Ohio Rev. Code Ann. § 2923.32.

FACTS:

Plaintiff supplier bought its domain name after 1996. Defendant provider managed a well-used website that posted homemade videos and bought its similarly pronounced but differently spelled domain name in 2005. Plaintiff filed a suit against defendant asserting claims for: 1) violation of § 43 of the Lanham Act, 15 U.S.C. § 1125(a); 2) trademark dilution under Ohio law; 3) trespass to chattels; 4) nuisance; 5) negligence; 6) violation of the Ohio Deceptive Trade Practices Act, O.R.C. § 4165.02; and 7) and state racketeering law, Ohio Rev. Code Ann. § 2923.32. Defendant moved for the dismissal of plaintiff’s second amended complaint for lack of jurisdiction and failure to state a claim. The court granted defendant’s motion in part and denied in part.

ISSUE:

Issue 1: Should plaintiff supplier’s claim for violation of § 43 of the Lanham Act, 15 U.S.C. § 1125(a) be dismissed for failure to state a cause of action?

Issue 2: Should plaintiff supplier’s claim for cancellation of defendant's trademark application be dismissed for failure to state a cause of action?

Issue 3: Should plaintiff supplier’s claim for trademark dilution under Ohio law be dismissed on the ground that its mark was not famous?

Issue 4: Should plaintiff supplier’s claim for trespass to chattels be dismissed on the grounds that he failed to make the necessary allegation that defendant provider intentionally came into physical contact with plaintiff's property, and that utube.com was a website which did not meet the definition of chattel?

Issue 5: Should plaintiff supplier’s claim for nuisance against defendant provider be dismissed on the ground that that nuisance was limited to interferences with land?

Issue 6: Should plaintiff supplier’s negligence claim against defendant provider be dismissed on the grounds that his allegations are conclusory, and he did not specify how or why a duty of care arises, or of what that duty may consist?

Issue 7: Should plaintiff supplier’s claim for violation of the Ohio Deceptive Trade Practices Act, O.R.C. § 4165.02 against defendant provider be dismissed?

Issue 8: Should plaintiff supplier’s claim for violation of state racketeering law, Ohio Rev. Code Ann. § 2923.32 against defendant co-founders be dismissed?

ANSWER:

Answer 1: No.; Answer 2: Yes.; Answer 3: No.; Answer 4: Yes.; Answer 5: Yes.; Answer 6: Yes.; Answer 7: No.; Answer 8: Yes.

CONCLUSION:

Conclusion 1: Regardless of whether the infringement claim appeared to be feeble, plaintiff supplier had provided defendant provider notice of the claim and basic grounds therefor. Plaintiff indicated that it was bringing a claim for infringement of an unregistered mark under the Lanham Act. By alleging that sales have been lost when its website crashed, plaintiff alleged, at least inferentially and indirectly, that utube.com facilitated sales when it was up and running.

Conclusion 2: Plaintiff supplier failed to tie its claim for cancellation of defendant's trademark application to any existing registration. The court lacked authority to cancel defendant's trademark applications under 15 U.S.C.S. §§ 1064, 1119 because defendant's mark was not registered.

Conclusion 3: Under Ohio law, the mark was not required to be nationally famous to state a claim for dilution. Because plaintiff supplier alleged that its mark was "strong" and that it expended significant funds advertising its utube.com website, it would be inappropriate to dismiss its dilution claim.

Conclusion 4: Plaintiff’s claim for trespass to chattels was dismissed because it failed to show trespass to a physical object; a domain name was classified as intangible personal property. Defendant did not make physical contact with the computers hosting the website.

Conclusion 5: Plaintiff supplier’s nuisance claim failed because it was not tied to land, as required by Ohio law.

Conclusion 6: Plaintiff supplier failed to allege the basis of its claim and defendant provider had little notice of the basis for plaintiff's generalized allegations of negligence. Pleading a cause of action in federal court "require[s] more than the bare assertion of legal conclusions.

Conclusion 7: Plaintiff supplier stated claims for trademark infringement of an unregistered mark, i.e., a domain name, including an unfair competition claim under the Lanham Act and a deceptive trade practices claim under the Ohio Deceptive Trade Practices Act.

Conclusion 8: Plaintiff supplier alleged that defendant cofounders "participated in the affairs" of the enterprise merely by noting their positions as CEO and CTO. Such designation does not constitute an allegation, as required by Ohio's RICO statutes, that each defendant committed "two or more specifically prohibited state or federal criminal offenses." Nor can it be implied or inferred from the complaint of what these predicate acts may consist, leaving defendants insufficient notice of the substance behind the claims against them.

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