As a part of the Third Massive Wave of the Copyright Troll Lawsuits (lawsuits filed at the close of December 2011 and continuing to the present) there has been a new wrinkle added, which are claims for trademark infringement. This post will take a look at the plaintiff behind this claim, the nature of the claim and whether or not it has any merit.
As a preliminary matter, a copyright troll asserting a trademark infringement claim is not, technically “new”: these claims have been previously raised when a Troll filed an Amended Complaint in an attempt to spread FUD or to paper over the fact that it has a problem with the underlying copyright. However, with these “John Stagliano, inc d/b/a Evil Angel Productions” complaints this is the first time we are seeing a sole trademark infringement claim being brought against Does.
John Stagliano a/k/a “Buttman” is a big time director, producer and distributor of pornography which does business as Evil Angel Productions, Inc. He is also a self-proclaimed Libertarian who fails to see the conflict between his philosophy of minimal government intrusion and using the judicial branch of our government to intrude into and terrorize ordinary citizens by his authorization. In other words, he is a hypocrite.
There have been approximately a dozen of these lawsuits (allegations are identical — porn titles can be different) filed across the country as of April 22, 2012 by the usual Trolls (Fiore, Kotzker, Hoppe and Lipscomb). For the purposes of this post, we will look at the first filed John Stagliano trademark complaint, which claims the infringement of its Evil Angel trademark filed in the United States District Court for the Middle District of Florida (embedded below). Mega Troll Michael Keith Lipscomb is the attorney of record for this lawsuit (3:12-cv-00337-HES-JRK) that involves the cute title “Occupy My Ass”.
Trademark infringement is based on the Lanham Act, which is a federal statute that regulates the use of trademarks in the world of commerce. It gives those who have registered their trademark with the Patent and Trademarks Office certain rights and remedies. One if these remedies is to sue for trademark infringement when, for example, Prada discovers a company that is selling counterfeit Prada handbags or Rolex uncovers a manufacturer of phony Rolex wristwatches. The Lanham Act provides for the issuance of injunctions to stop the manufacture or selling of counterfeit goods as well as statutory damages.
Stagliano’s complaint makes three separate claims under the Lanham Act:
- Infringement under Section 1114(1)(a) which gives a trademark holder the right to sue the counterfeiter of that trademark when used “in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive”,
- Contributory trademark infringement, which is inducing another to infringe on a trademark, and
- False designation of origin claim which is deliberately causing confusion at the origin of a product. Take as an example the counterfeit Prada handbag which has a label indicating it has been manufactured in Italy when, if fact, it was made in China.
So what is the fatal flaw to these claims? The complaint does not plead any specific facts as to how the Does sold, distributed or advertised any goods whatsoever. Also, since when is a porn flick a trademark?
In commenting on the trademark infringement claims of Patrick Collins, while denying the Troll leave to serve third party subpoenas Judge Legrome D. Davis of the Eastern District of Pennsylvania had this to say:
…we do note that “[f]or infringement of federally registered marks, what the Lanham Act requires is that the accused use be ‘in connection with the sale, offering for sale, distribution or advertising of any goods or services’ in a context that is likely to cause confusion, mistake or deception.” 4 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 23:11.50 (4th ed. 2011). Further, the accused use must constitute a “use in commerce” for a trademark infringement action to lie. See 15 U.S.C. § 1114(1).
Here, Plaintiff’s complaint baldly asserts that each of Defendant’s unauthorized uses of the PATRICK COLLINS and ELEGANT ANGEL marks will confuse consumers into purchasing Defendants’ goods or services, mistakenly believing them to be Collins’ goods and/or services. However, the complaint lacks any specific factual allegations that John Doe Defendants sold, distributed, or advertised any goods, much less goods bearing Plaintiff’s trademarks; or that Defendants have used Plaintiff’s trademarks “in commerce.” Instead, the facts alleged in the complaint show, at most, that all twenty-six (26) John Doe Defendants participated in a BitTorrent swarm to obtain a copy of Plaintiff’s movie. We harbor some doubt that these facts, even if true, support a claim of trademark infringement. See Ashcroft v. Iqbal, 129 S. Ct. 1937, 1949 (2009) (“Threadbare recitals of the elements of a cause of action, supported by mere conclusory statements” will not survive a motion to dismiss). As such, Collins’ trademark infringement claims do not give us good cause to permit Collins to subpoena John Doe Defendants’ ISPs.
Based on this Memorandum Order it looks as if Patrick Collins might be infringing on John Stagliano’s beloved trademark (Elegant Angel v. Evil Angel) and he should send his Trolls after Patrick Collins. That trademark infringement lawsuit would have more merit than the ones I have discussed here today.