When you hear the phrase “intellectual property litigation,” the first thing that probably leaps to mind is taking action to protect your intellectual property rights. Of course, there’s actually another side to that coin, which is taking action to defend against a claim of intellectual property infringement. When someone has wrongfully accused your business of encroaching on their intellectual property rights, you need the help of a skilled South Florida commercial litigation attorney experienced in intellectual property cases to get you the outcome your business deserves.
One way this kind of lawsuit can happen is if the business suing you had a valid copyright and/or trademark, but your conduct didn’t actually encroach on their intellectual property. In a recent case from federal court, the plaintiff was a dealer of used cars with locations in Central and South Florida. The dealership owned the copyright and trademarks on a stylized version of the phrase “DON’T PAY MORE” in white all caps, enclosed in alternating red and black boxes.
The defendant was a Lakeland auto dealer who had billboards on Interstate 4. The Lakeland dealership’s billboards said, “NEED A USED CAR?” on the top, “Don’t Pay More” on the bottom and the dealership’s name in the middle. The Lakeland dealership’s billboards used a different font, and contained no black or white, instead using only blue and a different shade of red.
Nevertheless, the plaintiff sued, alleging copyright and trademark infringement. To win these kinds of claims, a plaintiff needs evidence that you used or reproduced its mark without authorization, and that that use tends to create a likelihood of confusion in the minds of consumers about the source of the goods or services. The Lakeland dealership wisely fought back through counsel, making a motion for summary judgment, which the federal judge granted.
While infringement cases like this usually require a trial on the merits to resolve, there are some circumstances where a motion for summary judgment can succeed. This was one of those, as the District Court concluded that there was no valid material factual dispute about whether the Lakeland dealership’s billboards were likely to create confusion with the trademark holder’s billboards.
The plaintiff appealed, but lost. The plaintiff’s problem was that, although there were similarities between its billboards and the Lakeland dealership’s billboards, those similarities were limited to “noncopyrightable elements.” Certain things, like slogans and short expressions are not copyrightable. The copyright’s holder’s use of an outline of a car and its distinctive color scheme – in other words, the elements that were mark unique – were not things that were present on the Lakeland dealership’s billboards. (The Lakeland dealership’s billboards used very different colors and contained no graphics at all.)
The difference between a strong and a weak trademark and what it means to your case
Another thing that can help you immensely to defend a trademark infringement claim successfully is winning the evidentiary battle regarding the strength of the trademark. Trademarks can be weak or strong and the weaker the mark holder’s trademark, the harder it will be for the mark holder to win an infringement claim. In this competing car lots case, the trademark in question was not strong. The evidence showed that lots of dealerships in Florida used billboards that contained the phrase, “Don’t pay more,” which meant that the plaintiff had a relatively weak mark, which was something that strengthened the Lakeland dealerships’ defense position.
Whether you find yourself needing to protect your intellectual property rights or defend against another business’s claims that you infringed on their rights, be sure you have the effective legal representation it takes for success. Rely on the skilled South Florida commercial litigation attorneys at Stok Kon + Braverman to give you the powerful advocacy your business needs for success.
Contact us online or by calling (954) 237-1777 to schedule your consultation and learn more about how you can put the power of this office to work for you.