6:20-cv-00054
W.D. Va.Feb 11, 2022Background
- Plaintiff Emerson Creek Pottery (owned by Jim Leavitt) alleges Defendants Christina and David Demiduk used the name "Emerson Creek" pursuant to a license and later continued use after termination, prompting Lanham Act and common-law claims.
- In 2001 Demiduk and her then-partner agreed to sell Leavitt’s pottery in an Oswego, IL shop; parties dispute whether an express oral/written trademark license was formed (Leavitt says yes; Demiduk says no).
- Demiduk opened a store in 2002 as "Emerson Creek Pottery" (later adding a tearoom and, in 2010, an events venue operated as Emerson Creek Events); she continued to buy discounted pottery from Leavitt and regularly informed him of business changes.
- Leavitt registered the trademark EMERSON CREEK POTTERY (standard characters) in 2015; he requested in 2012 and again in 2017 that Defendants use "& Tearoom" to reduce confusion; he demanded cessation in 2018.
- Defendants registered/used domain names (including emersoncreek.com) and continued use after the 2018 demand; both sides moved for summary judgment on issues including existence of a license, naked license, acquiescence, infringement, holdover license, and breach of contract.
- The court denied both parties’ motions, finding genuine disputes of material fact on all dispositive issues and leaving questions for the jury/trier of fact.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Existence of an express license | Leavitt: parties agreed in 2001 (oral) and he memorialized terms in writing. | Demiduk: only a sales arrangement; no licensing agreement. | Genuine dispute of material fact; MSJ denied. |
| Existence of an implied license / control | Leavitt: parties’ conduct (orders, reporting, quality oversight) shows permission and control. | Demiduk: communications were voluntary; Leavitt did not exercise ongoing control. | Genuine dispute over degree of control; MSJ denied. |
| Holdover license / infringement after termination | Leavitt: license was terminated and continued use makes Defendants holdover licensees who infringe. | Demiduk: no license existed, so cannot be a holdover licensee. | Cannot decide without resolving whether a license existed; MSJ denied. |
| Naked license (abandonment/quality control) | Leavitt: he exercised some quality control; mark not abandoned. | Demiduk: Leavitt failed to exercise adequate control; defense available. | Defendants not estopped to raise it; disputed facts on control — MSJ denied. |
| Acquiescence / estoppel | Leavitt: never effectively consented to unchecked use; later demands show objection. | Demiduk: repeated notice of expansions with no objection implies acquiescence. | Disputed record facts (timing and nature of objections); MSJ denied. |
| Trademark infringement / likelihood of confusion | Leavitt: long use of mark, similar marks, evidence of actual confusion, and alleged intent to confuse. | Demiduk: distinct businesses (pottery vs. gift shop/tearoom/events) reduce confusion likelihood. | Ninth-factor analysis mixed; factual dispute on confusion — MSJ denied. |
| Breach of contract | Leavitt: Defendants breached contract by selling other lines and using the marks after termination. | Demiduk: no contract or different contract terms; disputed breach. | Disputed existence/terms of any contract; MSJ denied. |
Key Cases Cited
- Celotex Corp. v. Catrett, 477 U.S. 317 (1986) (summary judgment standard)
- Anderson v. Liberty Lobby, 477 U.S. 242 (1986) (genuine dispute and burden rules at summary judgment)
- Grayson O Co. v. Agadir Int’l LLC, 856 F.3d 307 (4th Cir. 2017) (likelihood-of-confusion multi-factor test)
- Sara Lee Corp. v. Kayser-Roth Corp., 81 F.3d 455 (4th Cir. 1996) (acquiescence/estoppel in trademark cases)
- FreecycleSunnyvale v. Freecycle Network, 626 F.3d 509 (9th Cir. 2010) (naked-license doctrine and quality-control requirement)
- Beach Mart Inc. v. L & L Wings Inc., [citation="784 F. App'x 118"] (4th Cir. 2019) (licensee estoppel and naked licensing discussion)
- John C. Flood of Va., Inc. v. John C. Flood, Inc., 642 F.3d 1105 (D.C. Cir. 2011) (licensee estoppel principles)
- Exxon Corp. v. Oxxford Clothes, 109 F.3d 1070 (5th Cir. 1997) (definition/character of trademark licenses)
- Century 21 Real Estate LLC v. All Prof’l Realty, Inc., [citation="600 F. App'x 502"] (9th Cir. 2015) (terminated licensees continuing use can constitute infringement)