Plaintiffs Veve and his business Batey Zipline Adventure
sued defendants, Corporan and Atabey Eco Tours, for trademark infringement,
trade dress infringement, false advertisement, and product disparagement. They moved for default judgment and then
summary judgment; the court granted summary judgment except as to the trade
dress claim.
Batey Zipline Adventure offers eco-tour services: hiking and
sightseeing tours in which customers learn about the natural ecosystems of the
Tanamá region. Plaintiffs spent about
$90,000 in advertising and marketing the Batey brand, since 2008 including via
the internet, the most effective advertising source with a worldwide
reach. Atabey began in late 2010,
offering competing eco-tour services and using advertising banners in the same
places Batey did and also using the internet.
Plaintiffs received phone calls from confused prospective
customers, and often had to explain that Batey and Atabey were different. One witness stated that she constantly had to
instruct customers to follow Batey road signs and not Atabey road signs, which
confused many customers because they were often found side-by-side; customers
complained of the phonetic similarity. A
Facebook chat documented a prospective customer’s confusion. Atabey’s former half-owner stated that he
often received calls at the Atabey phone number from customers asking about
Batey services. One witness stated that
she questioned Corporan about the similarity of the names, but Corporan ignored
her concerns.
On the Atabey webiste and Facebook page, there are various
pictures of the region and of Atabey expeditions, but some images are purportedly
of the property of Perez, a person associated with Batey, most noticeably a
suspension bridge. Perez told Corpran that she couldn’t enter his property or
use photos of his property to advertise her business; he permits other
eco-tourism companies to do business on his property.
Corporan also issued a “press release” regarding Batey and
Perez personally, claiming that Batey was in violation of Puerto Rico law
because Perez was responsible for cutting down an endemic species of plant, the
caoba bush, and that she called the Natural Resources Department of Puerto Rico
on him. Perez denied the cutting and
Corporan offered no proof . Corporan also falsely claimed that Batey operated
without a business license and that it did not pay taxes.
Given the default, there’s not much to say here about the
trademark claims, though the court was careful in running through the factors
even without the defendant’s participation.
On the trade dress claims, default was not enough. Because the claimed trade dress was
unregistered, the burden was on plaintiffs to show distinctiveness and
nonfunctionality. The claimed trade
dress was “an arrangement of elements that include: the suspension bridge,
caves, hiking paths, a sustainable or eco-friendly farming system, forest and
hills, and a network of platforms interconnected by zip lines (or canopies).” But these elements were inherently
functional: the suspension bridge, pathways, and ziplines all served a purpose,
specifically movement from one place to another. Since plaintiffs didn’t meet their burden of
showing nonfunctionality, the court didn’t address distinctiveness or
confusion.
The court also found false advertising based on the use of
photos depicting plaintiffs’ property: pictures of the suspension bridge and
caves located on their land. These
pictures constituted false statements of fact. Though they didn’t explicitly
state that the bridge and caves were part of the Atabey experience, the
necessary implication was that they comprised part of it. That was also material because it depicted “attractive
elements of the eco-tour experience,” which would likely influence purchasing
decisions. A statement that defendants
were “the only certified sustainable operation endorsed by the Puerto Rico
Tourism Company in the region” was also false because it was unsubstantiated by
any evidence.
The court likewise found for plaintiffs on the commercial
disparagement, defamation, and trespass claims.
For the former, the relevant statements were commercial speech because
made with the intent to influence potential customers, and attacked an
essential part of the quality of Batey’s services—safety and commitment to
environmental protection.
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