356 F. Supp. 3d 1125
D. Colo.2018Background
- Dalkita, Inc. (an architecture/construction firm) sued former employee Devin Mills and others alleging Lanham Act trademark infringement, cybersquatting, Colorado deceptive trade practices, common-law trademark infringement, unfair competition, interference with contracts, and trade-secret misappropriation; Dalkita sought a preliminary injunction to stop defendants’ use of the "Distilling Craft" mark and regain control of hosting and the domain.
- Mills conceived and developed the "Distilling Craft" podcast and registered distillingcraft.com before the first episode (July 18, 2017); he hosted and produced episodes while employed by Dalkita, which paid most podcast expenses, used Dalkita branding, and posted podcast material on dalkita.com.
- The Moores (Dalkita co‑owners) participated in production and communications, sometimes referring to the podcast as "our podcast" or describing Dalkita as sponsor; Mills testified there was an oral sponsorship agreement paying him hourly, but the Moores denied any sponsorship agreement and no written agreement was produced.
- After Mills’s March 12, 2018 termination he changed passwords, took control of the Blubrry hosting account, continued releasing episodes, and now uses Distilling Craft for his consulting business and media projects; Dalkita obtained a Colorado trademark registration (state) and has a pending federal application.
- At an evidentiary hearing, the court found limited pre‑launch public exposure (only a few signups), substantial Dalkita involvement in podcast production and branding, no convincing evidence of an express sponsorship agreement, and no demonstration that Dalkita would likely suffer reputational harm while litigation proceeds.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether plaintiff is entitled to a preliminary injunction to stop defendants’ use of the Distilling Craft mark and to regain hosting/domain control | Dalkita: continued use by Mills will cause irreparable harm to reputation/goodwill and loss of control over mark | Mills: he created and used the mark prior to publication and/or had a sponsorship agreement or ownership rights so Dalkita does not own the mark | Denied. Plaintiff failed to show likely irreparable harm during litigation, so injunction denied |
| Whether courts may presume irreparable harm in trademark cases | Dalkita: cites precedent for presumption of irreparable harm upon likely infringement | Defendants: argued heightened showing for disfavored injunction (not resolved); court considered eBay and later cases | Court: rejected a presumption; eBay and subsequent circuit authority require plaintiff to prove likely irreparable harm rather than rely on a presumption |
| Whether Mills had protectable trademark rights prior to Dalkita's involvement (priority of use) | Dalkita: any pre‑launch activity was insufficient to create protectable use | Mills: domain, logo, landing page, and promotion at conference established prior use; later continued use while at Dalkita preserved his rights | Court: Defendants failed to show by preponderance that Mills’ pre‑episode activities reached the consuming public sufficiently to establish trademark rights; no likelihood of success on merits |
| Whether a sponsorship or work‑for‑hire arrangement gave Mills or Dalkita ownership | Dalkita: asserts ownership as sponsor/producer and has state registration; Mills: claims oral sponsorship or that podcast was his work and now used independently | Court: found evidence inconsistent with a sponsorship agreement (Dalkita’s active control/branding, Moore’s involvement, lack of written terms, Mills’ silence), so defendants did not prove ownership | Court found defendants unlikely to prevail on infringement/unfair competition claims and denied their cross‑motion |
Key Cases Cited
- RoDa Drilling Co. v. Siegal, 552 F.3d 1203 (10th Cir.) (preliminary injunction standard)
- Winter v. Natural Resources Defense Council, 555 U.S. 7 (2008) (plaintiff must show likelihood of irreparable harm for injunction)
- eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006) (traditional equitable principles govern injunctions; no categorical rule)
- Herb Reed Enters., LLC v. Florida Entm't Mgmt., Inc., 736 F.3d 1239 (9th Cir.) (eBay reasoning extends to trademark cases; plaintiff must show irreparable harm)
- Ferring Pharms., Inc. v. Watson Pharms., Inc., 765 F.3d 205 (3d Cir.) (eBay applies in Lanham Act context)
- Beltronics USA, Inc. v. Midwest Inventory Distrib., LLC, 562 F.3d 1067 (10th Cir.) (extraordinary nature of preliminary injunction; clear and unequivocal right required)