SAM'S RIVERSIDE, INC. v. Intercon Solutions, Inc.
2011 U.S. Dist. LEXIS 62280
S.D. Iowa2011Background
- Sam's Riverside, Inc. sues Intercon Solutions, Inc., A-Reliable Auto Parts & Wreckers, Inc., and ARSHG, Inc. (ARSCO) in SD Iowa over cybersquatting, false advertising, and related claims arising from Intercon’s past web marketing for plaintiff.
- Intercon registered and maintained three domain names (samstrucks.com, samsaircleaners.com, samstruck.com) and corresponding sites intended to generate leads for plaintiff.
- After plaintiff terminated its web-management contract in 2004, Intercon allegedly altered the sites to remove plaintiff’s branding but continued to use them to generate leads, some of which reached ARSCO and led to sales.
- Plaintiff sought protection under § 43(a) of the Lanham Act, asserting a protectable common-law mark “Sam’s Riverside” and false advertising; plaintiff later registered “Sam’s Riverside” as a service mark in 2010.
- Plaintiff obtained a PTO registration for Sam’s Riverside (No. 3,809,187) on June 29, 2010; the court held that plaintiff failed to prove protectable rights in the phrase “Sam’s Riverside” standing alone prior to infringement.
- The court granted defendants summary judgment on all claims, and denied plaintiff’s cross-motions for partial summary judgment; state-lawcybersquatting claims also failed under the court’s ruling.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether plaintiff had a protectable common-law mark in 'Sam's Riverside' before infringement | Plaintiff used 'Sam's Riverside' historically as a mark. | Plaintiff did not brand itself with 'Sam's Riverside' standing alone before 2009. | No protectable rights; summary judgment for defendants on § 43(a). |
| Whether defendants’ websites’ pre-2009 content caused likelihood of confusion | Use of 'Sam's Riverside' standalone implied branding and source identification. | Evidence shows plaintiff used 'Sam's Riverside, Inc.' or 'Sam's Riverside Truck Parts'; not a standalone mark pre-2009. | No genuine issue of material fact; not likely to cause confusion. (Implied in §43(a) ruling) |
| Whether plaintiff proved false advertising under the Lanham Act | Challenged statements on websites post-2004 were literally false and deceptive. | No proof that statements deceived a substantial market; lack of materiality. | Defendants entitled to summary judgment on false advertising claim. |
| Whether plaintiff’s per se palming off claim survives | Use of air-cleaner photo on websites implied sale of plaintiff’s exclusive products. | No actual sale of those goods by Intercon and no agency linkage; leads diversion not branding. | Summary judgment for defendants on palming off claim. |
Key Cases Cited
- First Bank v. First Bank Sys., Inc., 84 F.3d 1040 (8th Cir. 1996) (protectable rights and source-identification standard under § 43(a))
- DaimlerChrysler AG v. Bloom, 315 F.3d 932 (8th Cir. 2003) (palming off requires misrepresentation of source of goods or services)
- Clorox Co. v. Clorox Co.,, 140 F.3d 1175 (8th Cir. 1998) (deception, materiality, and damages elements in false advertising)
- Everest Capital Ltd. v. Everest Funds Management L.C.C., 393 F.3d 755 (8th Cir. 2005) (no automatic deception presumption for literally false statements)
- Netscape Commc'ns v. ValueClick, Inc., 707 F. Supp. 2d 640 (E.D. Va. 2010) (authentication and admissibility issues affect summary judgment on internet-evidence)