Before 2017

October Trademark Cases Filed in the Northern District of GA

The U.S. District Court for the Northern District of Georgia has seen continued activity in the filings of trademark cases, adding to the considerable number of such cases filed in Georgia federal courts in September and covered in several blog entries, including our October 1 entry.  Abstracted below are the October 2012 trademark cases filed in the Northern District.

Acworth-Based Publisher Asserts American Digger® Trademark Against Spike TV Entities

The renewal of a television show for the 2013 season has sparked a trademark lawsuit in the Atlanta Division.

According to a complaint filed on October 26, Anita and Grady R. (“Butch”) Holcombe, Jr. have, since December 2004, published a bi-monthly magazine called AMERICAN DIGGER® “dedicated to the hobby of metal detecting and founded to promote the responsible excavation and recovery of artifacts related to America’s heritage, for enjoyment and historical significance.”  On May 15, 2012, Mr. Holcombe received a federal registration for the AMERICAN DIGGER® mark.  The complaint alleges that in September 2012, Mr. Holcombe formed the plaintiff Greybird Publishers LLC (“Greybird”) to own and operate the magazine, and that Greybird acquired the trademark rights on October 4, 2012.  Greybird also, alleges the complaint, owns and operates the website, “and produces and distributes the AMERICAN DIGGER® Relic Roundup Internet radio program, which Mr. Holcombe co-hosts.”

Spike TV airs a program called “American Digger,” described on its website as follows:

Spike TV travels around the country uncovering hidden treasure found in the backyards of everyday Americans in “American Digger.”  This new unscripted original series follows former professional wrestler turned modern day relic hunter Ric Savage, as he and his team from American Savage target areas such as battlefields and historic sites in the hopes of striking it rich and capitalizing on unearthing and selling bits of American history. The only thing standing in their way are the homeowners themselves, who Savage must convince to allow them to dig up their property using state-of-the-art metal detectors and heavy-duty excavation equipment. What artifacts they find, they sell for a substantial profit, but not before negotiating a deal to divide the revenue with the property owners. The team from American Savage is comprised of recovery expert Rue Shumate, battlefield historian Bob Buttafuso, Ric’s wife Rita who manages the business and their 25-year old son Giuseppe, who provides tech support and is the “muscle” of the operation.

According to the Episode Guide of that website, the first episode of “American Digger” aired on March 21, 2012.  Shortly thereafter, alleges the complaint, “the Holcombes began receiving a barrage of calls, e-mails, and unfavorable comments on hobbyist forums from subscribers and hobbyists,” who believed that the TV show was related to Greybird’s magazine, and who were “alarmed by the show’s highly inflammatory and negative depiction of their hobby . . . .”  The complaint asserts that “Ms. Holcombe spent numerous hours attempting to correct these misperceptions.”

Greybird alleges that the Holcombes understood Spike TV’s show would only last one cycle and that the problems caused by that show would subside.  However, alleges Greybird, the Holcombes learned in August 2012 that the TV show would be renewed for the 2013 season.

Greybird’s complaint asserts counts of trademark infringement under the Lanham Act and Georgia common law; unfair competition under the Lanham Act, O.C.G.A § 23-2-55, and Georgia common law; trademark dilution under the Lanham Act and under O.C.G.A. § 10-1-451; violation of the Georgia Deceptive Trade Practices Act (O.C.G.A. § 10-1-370 et seq.); unjust enrichment; and misappropriation and conversion.

The complaint requests not only injunctive relief and compensatory monetary relief, but also enhanced damages and attorneys’ fees under the Lanham Act, as well as punitive damages under Georgia law.

The case is Greybird Publishers LLC d/b/a American Digger® v. Viacom, Inc., Spike Cable Networks Inc., Spike Digital Entertainment LLC, Spike Digital Entertainment Inc., and New 38th Floor Productions Inc., No. 1:12-cv-3741-JEC, filed 10/26/12 in the U.S. District Court for the Northern District of Georgia, Atlanta Division, assigned to Chief U.S. District Judge Julie E. Carnes.

Orlando-Based Filta Group, Inc. Sues Accused Holdover Franchisee Over Post-Termination Use of Marks for Cooking Oil Disposal Services

The Filta Group, Inc. (“Filta”), based in Orlando, Florida, describes its services as “providing cooking oil micro filtration services around the world to restaurants and other food establishments.” According the “About & Contact” section of its website, Filta was founded in the United Kingdom in 1996 and has been offering its services in the United States since 2002.  Filta (or its UK counterpart The Filta Group Ltd.) is the registrant named on federal trademark registrations for the marks FILTAFRY (U.S. Trademark Regs. Nos. 2,585,933 & 3,711,461) and FILTA ENVIORNMENTAL KITCHEN SOLUTIONS (U.S. Trademark Reg. No. 3,701,153).
On October 29, Filta filed suit in the Gainesville Division against Cumming-based Either Which Way Inc. (EWWI) and Daniel Van Klingeren for service mark infringement and unfair competition.  EWWI was dissolved in September 2010.[1]  According to the complaint, EWWI and Mr. Van Klingeren, its principal, entered into a franchising agreement with Filta in February 2008, but Filta terminated the contract in 2010 due to “various breaches of the Franchise Agreement.”   
The complaint further alleges that in late 2011, Van Klingeren filed for bankruptcy, failing to list any Filta assets, and that after bankruptcy was filed, Van Klingeren and EWWI: “(a) Held themselves out to be Filta franchisees or otherwise connected with the Filta brand and Filta system; and (b) Wrongfully used Filta’s service marks and/or trade marks to operate a competing business.”
Filta’s complaint asserts counts against EWWI and Van Klingeren for service mark infringement and for unfair competition under the Lanham Act (§ 43(a), 15 U.S.C. § 1125(a)) and under Georgia law (O.C.G.A. § 23-2-55). The Filta group seeks, in addition to injunctive relief: (a) “the Defendants’ post bankruptcy petition profits, (b) Filta’s post bankruptcy petition damages, and (c) the costs of the action, together with additional accrued interest, and whatever further relief this Court deems necessary and just.”  
The case is The Filta Group, Inc. v. Either Which Way, Inc. et al, No. 2:12-cv-255, filed 10/29/12 in the U.S. District Court for the Northern District of Georgia, Gainesville Division, assigned to U.S. District Judge William C. O’Kelley.

[1] According to the Georgia Secretary of State’s website, EWWI was dissolved on September 14, 2010.

Holiday Inn® Hotel Chain Brings Another Trademark Action Against an Accused Holdover Licensee

The last couple of months have now seen three trademark actions by hotel chains against accused holdover licensees. The first two that we covered dealt with the marks HOLIDAY INN® and
RODEWAY INN®.   The most recent one concerns a hotel operator in Vancouver, Washington and, once again, the HOLIDAY INN® family of marks.

On October 16, 2012, Holiday Hospitality Franchising, LLC (“HHFL”) and Six Continents Hotels, Inc. (collectively “Plaintiffs”) sued Premier NW Investment Hotels, L.L.C. (“Premier”) and its manager and owner Michael DeFrees for federal service mark infringement, dilution under the Lanham Act, and unfair competition under the Lanham Act and Georgia common law.  Plaintiffs asserted a count solely against Premier for breach of a license agreement, and a count solely against Mr. DeFrees, who had become a guarantor regarding that license, for breach of his guarantee.

The complaint alleges that HHFL and Premier entered into a License Agreement on December 11, 1998, which “authorized and required” Premier to use Plaintiffs’ HOLIDAY INN® marks in the operation of a HOLIDAY INN EXPRESS® hotel in Vancouver, Washington.  “As an inducement to HHFL to execute the License Agreement,” alleges the complaint, Mr. DeFrees executed a guarantee that same date, December, 1998.  The License Agreement terminated on December 31, 2010, according to the complaint.

Plaintiffs’ allegations recite unsuccessful pre-lawsuit efforts to get the defendants to completely disassociate themselves from the HOLIDAY INN® brand, which they allege was required by the License Agreement.  For instance, although Premier removed the term “HOLIDAY” and substituted for it the word “GATEWAY,” Plaintiffs did not deem this sufficient: HHFL wrote Defendants and pointed to their continued use of the same scripted style of text that appears in HHFL’s HOLIDAY INN EXPRESS® registration (see comparisons below).   For further example, Plaintiffs allege that Defendants continue to use the domain name, with the letters “hie” standing for “Holiday Inn Express.”  The complaint and its exhibits refer to additional objections noted by Plaintiffs.

Mark appearing in U.S. Trademark Reg. No. 2,207,318

Excerpt from Exhibit N to Complaint, purporting to show a sign on Defendants’ hotel

Part of the injunctive relief Plaintiffs request (in addition to compensatory monetary relief) is an order requiring Defendants to transfer the domain name to them, and to “deliver up for impoundment and destruction all HOLIDAY INN EXPRESS® signs including those on which the word ‘Holiday’ has been replaced with the word ‘Gateway.’”  Plaintiffs additionally request all expenses of litigation under Georgia’s “stubbornly litigious” statute, § 13-6-11, as well as attorneys’ fees under O.C.G.A. § 13-1-11[1] and 15 U.S.C. § 1117.

The case is Holiday Hospitality Franchising, LLC and Six Continents Hotels, Inc. v. Premier NW Investment Hotels, L.L.C. and Michael DeFrees, No. 1:12-cv-3608-RWS, filed 10/16/12 in the U.S. District Court for the Northern District of Georgia, Atlanta Division.  The case has been assigned to U.S. District Judge Richard W. Story.

[1] Under § 13-1-11, to obtain attorneys’ fees, the holder of a note or other evidence of indebtedness must first notify the debtor, after maturity of the obligation, of the option to pay both principal and interest on the obligation within 10 days after receiving the notice, without having to incur attorneys’ fees.  A claim for attorneys’ fees becomes void if the debtor makes that payment within that 10-day period.  O.C.G.A. § 13-1-11(a)(3) (2012).  Paragraphs 57 and 112 of the Complaint recite text reflecting that statutory language.

George Clooney, Julia Roberts File Right-to-Privacy and Unfair Competition Action Against Kennesaw-Based Projector Seller and “John Does 1-20”

On October 12, 2012, Hollywood celebrities George Clooney and Julia Roberts filed suit in the Atlanta Division against Digital Projection, Inc. (“DPI”), a seller of projectors and related items based in Kennesaw, Georgia.  Additionally sued are fictitiously-named “John Doe” defendants 1 through 20.[1] 

Mr. Clooney and Ms. Roberts claim that, without their permission, DPI and the other defendants “prominently used large photographs of Plaintiffs in Defendants’ advertising, marketing, and promotions,” including print advertisements, web pages, and video displays shown at trade shows.  “As such,” the complaint further alleges, “Defendants have infringed upon Plaintiffs’ Rights, and have intruded upon Plaintiffs’ privacy rights to be left alone and to control the use of Plaintiffs’ images, identities and personas in connection with commercial advertisements, including the right to refuse to appear in them.”

The complaint recites causes of action for violation of right of privacy under Georgia law, violation of Georgia’s Uniform Deceptive Trade Practices Act (O.C.G.A § 10-1-370 et seq.), unfair competition under O.C.G.A. § 23-2-55, false designation of origin under § 43(a) of the Lanham Act, and negligence.  Plaintiffs seek injunctive relief, compensatory damages, “profits received by Defendants as a result of the unauthorized use of Plaintiffs’ images,” and punitive damages.

Regarding the first cause of action, a federal court in Georgia recently stated: “[R]ight of publicity claims under state law are uniquely grounded in an individual’s right to privacy and/or an individual’s property right to control third-party use of their persona.”[2]  “Notably, the Eleventh Circuit has permitted such state law claims to proceed simultaneously with claims under the Lanham Act for trademark infringement.”[3]

The case is George Clooney and Julia Moder, professionally known as Julia Roberts v. Digital Projection, Inc. and Does 1-20, No. 1:12-cv-3569-JEC, filed 10/12/12 in the U.S. District Court for the Northern District of Georgia, Atlanta Division.  The case has been assigned to Chief U.S. District Judge Julie E. Carnes.

[1] “‘The name ‘John Doe’ is, and for some centuries has been, used in legal proceedings as a fictitious name to designate a party until his real name can be ascertained.’”  Milburn v. Nationwide Ins. Co., 228 Ga.App. 398, 400, 491 S.E.2d 848, 851 (1997) (quoting Black’s Law Dictionary 750 (5th ed. 1979)).  Fictitious party practice has been permitted in federal court when the plaintiff has been “able to describe an individual without stating his or her name precisely.”  White v. City of Atlanta, No. 1:07-cv-1739-WSD, 2007 WL 4553520, at *4 (N.D. Ga. Dec. 19, 2007).  Plaintiffs here allege upon information and belief that “Defendants, and each of them, were and are the agents, licensees, employees, partners, joint-venturers, co-conspirators, owners, principals, and employers of the remaining Defendants . . . .” (Complaint ¶ 8).
[2] Bogart, LLC v. Ashley Furniture Indus., Inc., No. 3:10-cv-39 (CDL), 2012 U.S. Dist. LEXIS 121787, at *36-*37 (M.D. Ga. Aug. 28, 2012).
[3] Id. at *37 (citing Tana v. Dantanna’s, 611 F.3d 767, 772 & 783 (11th Cir. 2010)).
Infringement Action Filed Over “404-CUT-TREE” Trademark

On October 4, 2012, Norcross-based The Delbridge Group, Inc. d/b/a 404-CUT-TREE (“Delbridge”) filed a trademark action in the Atlanta Division against defendants 404-CUT-TREE, Inc. and BAM Tree Experts, Inc. (collectively, “Defendants”).

Delbridge is the named owner of U.S. Trademark Registration No. 3,934,225 (“the ‘225 Registration”) for the mark 404-CUT-TREE® for “tree removal services,” and of Georgia Service Mark Registration No. S-24222, registered on August 13, 2008 for the same mark, for “cutting, trimming, and pruning trees.”  Delbridge’s Amended Complaint (filed Oct. 9) alleges, among other things that Delbridge “has been in the business of tree removal, cutting, pruning, and trimming, since December 3, 1997, and that it maintains the website

Delbridge alleges that Defendants are using the identical mark “404-CUT-TREE” with the intent to trade upon the “goodwill and extensive recognition that [Delbridge] had already established in the marketplace for tree removal services.”  The business name 404-CUT-TREE, INC. appears in the Georgia Secretary of State’s website, listing the Cumming, Georgia address that Delbridge associates with the Defendants.  That website lists defendant BAM Tree Experts, Inc. as having the same address.  Delbridge charges that Defendants’ registration of the “404-CUT-TREE” name with the Georgia Secretary of State’s Office, and their use of that name, was done with the “dominant purpose” of palming off its services as those of Delbridge,” and of “confusing consumers and persons in the trade as to the source or origin of such services.”

Asserted against Defendants are counts for infringement of a federally-registered mark, false designation of origin under § 43(a) of the Lanham Act, and unfair competition under § 23-2-55 of the Official Code of Georgia.  Delbridge requests injunctive relief, including an order that “Defendant 404-CUT-TREE, Inc. [ ] change its corporate name to a name which is not confusingly similar to 404-CUT-TREE.”  Delbridge also requests compensatory monetary relief in the form of actual damages of “at least $75,000” and Defendants’ profits gained from use of the accused mark.  Delbridge additionally seeks trebling of the damages or profits due to the alleged willfulness of the infringement, as well as attorneys’ fees and costs.

The case is The Delbridge Group, Inc. d/b/a 404-CUT-TREE v. 404-CUT-TREE, INC. and BAM Tree Experts, Inc., No. 1:12-cv-3465-SCJ, filed 10/04/12 in the U.S. District Court for the Northern District of Georgia, Atlanta Division.  The case has been assigned to U.S. District Judge Steve C. Jones.

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