06 June 2018

"Cocky" Goes Limp

… which is intentionally over the line of "appropriate" puns and comments regarding this controversy because so much else is. Including, in particular, the stereotypes embedded in the marketing and brand identification in the "field of romance novels."

First, a (non)disclaimer: Prior to posting my prior screed on this nonsense, I had not read any of the court submissions. Those comments that I made were on general principles and based on (a) the actual registration documents and (b) my specific knowledge of practices, procedures, and commercial values in the arts. I'm thus gratified that Judge Hellerstein reached the same conclusion on the actual record before him when he heard a doomed motion for a preliminary injunction last Friday (PDF) (HT: The fabulous and unappreciated "Courtney Milan").

The real point here is that a piece of paper from the PTO is not a bloody magic wand that enables the holder of that paper to magically take "all the monies you earn" at Amazon Just Because. There's still plenty of legal work to do, and it requires hard facts and rewards a stiff… upper lip… more than it does thinking with a part of the anatomy (or wallet) that doesn't have any bloody grey cells.

That said, the critical passage from Judge Hellerstein's oral ruling is this:

To sum up, the most important factor here as we have gone through the eight is the strength of the plaintiffs' mark. It seems to me at this point of the record and given the way that these titles look to be more adjectives than indications of source, that we have a weak mark.

[Second, i]t is not clear that defendants use the word "Cocky" in a way that makes it an indication of source. It is more a description of the nature of the contents: Her Cocky Firefighters, Her Cocky Doctors. I hold that defendant is not using the word "Cocky" in a mark. Although there could be a likelihood of confusion, other factors being equal, that there is some kind of an infringement, at this point I don't think a similarity.

Third is the competitive proximity of their products. They are clearly competitive proximate.

The fourth is a likelihood that plaintiff will bridge the gap and offer a product like defendants. That is not really a factor because both are in the market already.

Fifth is actual confusion. I didn't find any.

[Sixth is] Defendant's good faith, I think it is a mixed factor.

Seven, the quality of the defendants' product as compared to plaintiff's, they seem to be equal.

[Eighth, s]ophistication, at least at this point on the record, the sophistication of the purchasers, I think sophistication is high, and that is another factor against issuing a TRO or a preliminary injunction.

Now let's talk about irreparable harm. Plaintiff will suffer irreparable harm if, assuming the trademark is valid, others will occupy the field. Although sales data can be obtained and damages can be proved, it is also a damage to good will involved in the trademark that can't be proved. So there clearly is irreparable harm that would be suffered by the plaintiff in the absence of restraint. However, it seems to me that defendant, who is on the market with her romance novels, if restrained, would also suffer damage and it would be irreparable. If a book is taken off the market, it can't be sold. Books of this nature have to do with timeliness as well. So I can't say that there is any balance here. If there is, it is likely to tip in defendants' favor because a good portion of injury by the plaintiff would be compensable in damages and captured profits. So that factor is in favor of defendant.

Whether an injunction is in the public interest, given the way these trademarks are used, I don't think there is much of a public interest in them.

Here plaintiff can't demonstrate that its trademark merits protection, nor in my opinion that defendant's use of a similar mark is likely to cause consumer confusion. Those are the eight factors that we just talked about. Accordingly, the motion for a TRO and for a preliminary injunction is denied.

That doesn't mean the case is over. It means that we go into the next stage of discovery.

Hop Hop Prods., Inc. v. Kneupper, No. [20]18–cv–04670 (S.D.N.Y., 01 Jun 2018) (Hellerstein, J.), trans. at 41–43 (transcript-artifact paragraphing corrected).

I'll raise a Jack Daniels for this one, for the same reasons as before. The legal underpinning of the Jack Daniels letter is the difficulty in carrying the burden to justify injunctive relief — whether the extraordinary burden for a temporary restraining order or preliminary injunction stated here, or the burden after trial when damages have already been proven. The was a fundamental lack of judgment by plaintiff and plaintiff's counsel — not just on procedural grounds, but on the basis of the marketplace (I love that Judge Hellerstein correctly characterizes the marketplace of romance readers as "sophisticated" regarding use of the term "cocky" in a title, see trans. at 39–40). The cold hard facts, not the limp protestations of a would-be usurper.