Friday, April 16, 2010

The very mention of your name ... may infringe

Simmons v. Cook --- F.Supp.2d ----, 2010 WL 1253548 (S.D. Ohio)

Plaintiffs sued defendants for patent and trademark infringement and related claims based on various items of exercise equipment and associated trademarks, LOUIE SIMMONS (a well-known power lifter and strength coach who co-invented exercise machines for back rehabilitation) and REVERSE HYPER. Simmons worked with Cook on development and marketing of his exercise machines, and then Cook began developing a competing device, for which he obtained a patent. His CorEvolution machine is promoted by infomercials, and Simmons voluntarily agreed to appear in at least one infomercial, waiving various rights in a written contract. There was also a patent and trademark license between the parties, but when Cook took the position that the CorEvolution machine wasn’t subject to the license, Simmons sued.

In the Simmons infomercial, Simmons was identified with a caption and his story was linked with the creation of the CorEvolution machine. His dialogue included: (1) “[I]n 1993 I decided to patent [the reverse hyperextension exercise], making it available to all commercial gyms, major colleges, and chiropractic offices, and pain centers. The CorEvolution is small; it's very affordable, and very effective, and everyone can use it ….” (2) “Because my name Louie Simmons is associated with strength training, umm, many gyms would only buy it for people in the, in the strength activities. They didn’t realize that first and foremost it’s a rehab device. If my name was Dr. Louie Simmons, I would’ve already sold millions of these machines. When people have these, they realize that this is something you cannot do without.” Cook also posted on a weightlifting discussion board that “I have spent almost 4 years working on this project for Louie and it is finally coming together. We have had great success so far and we look to really skyrocket in the months to come The CorEvolution is exactly like the Reverse Hyper, but it is very light ....”

Defendants argued that they weren’t making trademark uses. As you might (sadly or not) expect, this wasn’t enough to get summary judgment. As to LOUIE SIMMONS, they argued that they were identifying the man, not the service mark. The court found that the infomercial references were “arguably” offered as source identifiers. By suggesting that Louie Simmons was the source of the CorEvolution machine, there was arguable use as a service mark. (Isn’t that a trademark?) Similarly, Cook’s internet statement could be read to suggest that the CorEvolution has the same source as the Reverse Hyper. Internal communications in which defendants referred to their machine as the Reverse Hyper, however, were not uses in commerce.

What about that contract? Among other things, defendants got the right to use Simmons’ “name,” and he agreed to “release, discharge, and agree to hold harmless [defendants] from and against all liability resulting from the use of [Simmons’] name, the Performance, and the Testimonial.” The court said that “even the Defendants did not interpret these clauses to confer a license to the use of Plaintiffs’ trademarks. Specifically, Defendants argued only that Simmons ‘waived all rights to compensation regarding’ ‘the name and likeness of Louis Simmons[,]’ and never made the parallel argument that Simmons waived his rights to the LOUIE SIMMONS mark.” But then the license doesn’t make much sense. What would it mean to waive rights to the name and not to the mark, which is the name? Especially when courts are willing to hold, as here, than any use in commerce can be use as a mark? Could the parties really have intended this? (I’m reminded of Shylock’s pound of flesh—not much use without the right to draw blood.)

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