Soaring Helmet Corporation v. Bill Me Inc
2:09-cv-00789
| W.D. Wash. | Jan 3, 2011Background
- Plaintiff Soaring Helmet owns VEGA and VEGA TECHNICAL GEAR marks for motorcycle helmets and related gear.
- Nanal operates LeatherUp.com, an internet-only retailer; it purchased Google AdWords keywords including 'vega helmets.'
- Soaring Helmet alleges Nanal’s use of 'vega helmets' keywords and related advertising caused confusion and diluted its marks.
- Nanal ceased using the keywords after a cease-and-desist letter; Soaring Helmet produced evidence of a Xavier-like 'XElement Vega' jacket sold by other sites.
- Soaring Helmet filed suit on June 9, 2009, asserting Lanham Act claims, plus state-law CPA and tortious interference claims.
- The court later denied Soaring Helmet’s motion to add Bootesaz personally as a defendant; it granted partial summary judgment to Nanal.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Likelihood of confusion for trademark claims | VEGA mark strength and relatedness create confusion. | No substantial confusion between VEGA and 'vega helmets' ads. | Genuine dispute of material fact; no summary judgment for confusion. |
| False advertising under § 43(a) for 'vega helmets' ads | AdWords usage misleads consumers about authorization and product origin. | Insufficient evidence of deception and injury. | Evidence supports deception and injury; false advertising claim survives. |
| State-law CPA claim viability tied to Lanham Act claims | CPA mirrors Lanham Act deception and injury to business. | No independent showing beyond Lanham Act suffices. | CPA claim survives to the extent based on Lanham Act evidence. |
| Tortious interference with business expectancy | Nanal's conduct caused loss of customers and deals. | No proven existing business expectancy was terminated. | Summary judgment for Nanal on this claim. |
Key Cases Cited
- Dreamwerks Prod. Group, Inc. v. SKG Studio, 142 F.3d 1127 (9th Cir. 1998) (Sleekcraft factors guide likelihood of confusion analysis)
- AMF Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979) (establishes Sleekcraft factors for likelihood of confusion)
- Brookfield Comm., Inc. v. Western Coast Entm’t Corp., 174 F.3d 1036 (9th Cir. 1999) (strength of marks and related factors in confusion analysis)
- U-Haul Int’l, Inc. v. Jartran, Inc., 793 F.2d 1034 (7th Cir. 1986) (facial falsity triggers presumption of deception in false advertising)
- Southland Sod Farms v. Stover Seed Co., 108 F.3d 1134 (9th Cir. 1997) (false advertising elements and deception standards)
- Interstellar Starship Serv., Ltd. v. Epix, Inc., 184 F.3d 1107 (9th Cir. 1999) (trademark disputes are highly factual and disfavored for summary judgment)