It Takes the Cake: e-Discovery & Social Networking in Trademark Litigation

In a reverse confusion trademark infringement case, the Plaintiff made software named CakeBoss. 

The Plaintiff had a website with the same name and registered their trademark. Masters Software, Inc. v. Discovery Communs., Inc., 2010 U.S. Dist. LEXIS 79584, at *1-3 (W.D. Wash. July 16, 2010).

Tasting the Difference

The Discovery Channel cooked up a television show also named Cake Boss, which first aired long after CakeBoss had been out of the oven.   

Despite the Plaintiff’s emails and a phone call requesting a name change before the show premiered, Cake Boss aired with a very similar name to CakeBoss.

Bain Marie Trademark Confusion  

This was a case of “reverse confusion.”  This is a situation where the junior mark is stronger than the senior mark.  Masters Software, Inc. at *10. This is not much of a surprise, since the senior mark belonged to a small company verse a cable TV show with marketing merchandise.

Confusion Sachertorte 

The Court mixed and baked all the evidence of actual confusion the senior mark suffered. 

The Court’s analysis included a three layer cake with misdirected emails from the Defendant’s fans. 

The email messages showed visitors to the website assumed it was related to the TV show.  Questions were addressed to the TV show; inquires for custom cakes from the TV show star; and one email stating concern with the bakers on the show not wearing gloves, washing their hands or wearing hats.  Masters Software, Inc. at *15-16.   

Swirling the Pan with Facebook

The evidence also included the Plaintiff’s Facebook page which had “fans” who thought both the Plaintiff and Defendant were related.  Masters Software, Inc. at *7.

Injunction Parfait

The Court ordered a surgical preliminary injunction against the Defendants.   

The injunction required the Defendants, pending trial, to cease using the name “Cake Boss” on the TV show and on related merchandise.  Masters Software, Inc. at *37-38. 

The Defendants were allowed to sell any pre-existing DVD’s and other merchandise.  Masters Software, Inc. at *38. 

The show was in its third season and a name change was not required until the fourth season or on future re-runs.  Masters Software, Inc. at *38. 

Bow Tie Thoughts 

e-Discovery service providers have email collection down from computers.  Things can get complicated with webmail, but the collection technology is proven on email.

What do you do with Facebook evidence?  How did the Plaintiff in this case capture “fan” evidence to show confusion?

The simplest way to preserve such evidence would be to print the Facebook page.  The next step up would include printing the website as a PDF or screen captures.  Special web-capture software can also be deployed to preserve the ESI if the situation warrants it.

People live their lives connected to SmartPhones and data in the “cloud.”  Attorneys need to consider how to collect this electronically stored information when there is litigation.  However, the answer might be as simple as “Print to PDF” in some cases.

2 thoughts on “It Takes the Cake: e-Discovery & Social Networking in Trademark Litigation

  1. CloudPreservation is a service that we built that handles just this situation. You can preserve your web properties, export as PDF’s, or even move them into our cloud-based ediscovery application. CloudPreservation.com

  2. Oddly enough, I had run into an incident where Facebook and Webmail needed to be captured. Website capture (or Site-Petrification) as it is called is implemented on a lot of intellectual property cases I consult on. It seems that print to PDF might be more cumbersome when compared to a lot of other solutions. Hopefully the Senior wins in this matter. If they can not only prove that the requests where made before the show started, but also show that their daily business activities were disrupted with “fan email” I would think they would be looking at a strong settlement. My two cents: Good Luck CakeBoss!

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