Boathouse Group, Inc. v. Tigerlogic Corporation
777 F. Supp. 2d 243
D. Mass.2011Background
- Boathouse sues TigerLogic for trademark infringement of POSTPOST under Lanham Act and Massachusetts law.
- Boathouse developed POSTPOST (Aug 2010) and launched beta on postpo.st; intends to expand to Facebook.
- TigerLogic launched POSTPOST (Dec 2010) on postpost.com; plans expansion to Twitter.
- TigerLogic claims assignment from DK New Media (DKNM) in Dec 2010 and license-back; Boathouse disputes validity.
- Boathouse contends it is senior user and owner of POSTPOST; assignment may affect priority.
- Court preliminarily analyzes likelihood of success, irreparable harm, balance of equities, and public interest for injunction.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Who owns priority in POSTPOST mark | Boathouse is senior user; DKNM assignment not conclusively effective | TigerLogic (via DKNM) should be senior due to assignment | Boathouse remains senior user; assignment questionable but not decisive |
| Does the assignment/license-back transfer priority | Assignment should convey seniority | Assignment invalid or ineffective to transfer priority | Assignment fails to transfer priority; Boathouse remains senior unless assignment validly conveys rights |
| Likelihood of confusion under Pignons factors | Marks, services, channels, and actual confusion favor infringement | Differences in product scope and relatedness weaken confusion | Substantial likelihood of confusion found; strong support for injunction |
| Irreparable harm and public interest | Confusion harming reputation and goodwill warrants injunctive relief | Harm mitigated; non-infringing conduct possible | Irreparable harm presumed; public interest favors injunction |
| Balance of equities in granting injunction | Senior user protection and ongoing confusion justify relief | Temporary hardship to TigerLogic | Boathouse's entitlement to injunction favored by equities |
Key Cases Cited
- Nieves-Márquez v. Puerto Rico, 353 F.3d 108 (1st Cir.2003) (likelihood of success is critical in injunctive analysis)
- Star Fin. Servs. v. AASTAR Mortg. Corp., 89 F.3d 5 (1st Cir.1996) ( Lanham Act protections for marks)
- Borinquen Biscuit Corp. v. M.V. Trading Corp., 443 F.3d 112 (1st Cir.2006) (likelihood of confusion governs preliminary injunctive relief)
- Volkswagenwerk AG v. Wheeler, 814 F.2d 812 (1st Cir.1987) (priority of use for unregistered marks)
- Boston Athletic Assoc. v. Sullivan, 867 F.2d 22 (1st Cir.1989) (relatedness and strength considerations in marks)
- Marshak v. Green, 746 F.2d 927 (2d Cir.1984) (assignment invalidity when transfer harms consumer source)
- PepsiCo, Inc. v. Grapette Co., 416 F.2d 285 (8th Cir.1969) (assignment transferring to different goodwill can be ineffective)