Trademark law and LinkedIn resumes: watch out?

Portkey Tech. PTE Ltd v. Venkateswaran, 2024 WL 3487735, No. 23-CV-5074 (JPO) (S.D.N.Y. Jul. 19, 2024)

Another case that starkly shows the effects of trademark’s abandonment of any harm requirement, not to its benefit, where false advertising claims fail because alleged misstatements about the extent of the defendant’s past involvement with a company don’t do it any identifiable harm, but trademark claims succeed because something something affiliation. (Maybe companies can resurrect noncompetes by prohibiting uses of their trademarks in former employees’ resumes! This is a joke, but that doesn’t mean it won’t happen.)

Portkey sued for unfair competition/reverse passing off, false advertising, and trademark infringement under the Lanham Act, as well as related state-law claims. It alleged that plaintiff Vignesh Sundaresan is the founder and sole proprietor of Portkey, a “software and technology company that operates many of Sundaresan’s blockchain, NFT, and Web3 projects.” Venkateswaran allegedly worked as an independent contractor for Portkey from 2017 to 2022, during which Venkateswaran performed work in areas like “communications and public relations,” “management of social media platforms,” and “attending and representing in conferences.” Sundaresan allegedly directed Venkateswaran and others at the company to adopt the alias “TWOBADOUR” when communicating with the public, and to “assist in the operation of METAPURSE,” which is “a fund utilized for the acquisition of digital art NFTs and virtual land NDTs, and other Web3-related investments.”

In 2022, the relationship dissolved; Portkey objected to Venkateswaran’s alleged references to Portkey and its asserted trademarks since 2022. “Venkateswaran publicly lists his former work at Portkey—including use of the TWOBADOUR alias and involvement with METAPURSE—on his ‘bios’ on Twitter and LinkedIn and has allegedly continued to associate himself with those projects in his public and private statements.”

This is the Second Circuit, so nominative fair use is just a set of considerations to put into the hopper, and it’s almost impossibly difficult to kick out an infringement claim on a motion to dismiss without something like “clear parody or a total absence of proximity between the marks.”

Here, the marks in question were used at the top of Venkateswaran’s public profiles, directly proximate to his current business ventures. Sometimes Venkateswaran noted a past affiliation with TWOBADOUR and METAPURSE, but other times he did not. And sometimes he used terms that may still lend themselves to confusion (such as abbreviating “Former” into “Fmr”). For example, the First Amended Complaint alleges that Venkateswaran included on LinkedIn that he was the “Fmr Steward of Metapurse,” but then simply “Creator of the @Twobadour pseudonym.” Even if Venkateswaran is correct that an indication of former affiliation is not likely confusing as a matter of law, that would not shield the alleged reference to the TWOBADOUR mark, which at least on LinkedIn lacks an indication that the affiliation had ended.

Anyway, you can’t use “any indication of non-affiliation” to avoid an infringement claim, per JDI. “It still may be that some disclaimers or other explicit indications of non-affiliation will be enough to render consumer confusion unlikely, but whether that is true in this case will depend on facts not yet before the Court.” This bore on the similarity factor: “arguments about explicit indications of non-affiliation go to similarity.” And because the text of the alleged marks was similar (which will always be the case in any truthful reporting of former employment), and there was a disputed issue of fact about whether “former” and the like mattered, similarity weighed in favor of confusion.  

The court specifically noted that actual confusion was not plausibly alleged because the allegations were conclusory, but that didn’t matter. By contrast, allegations that defendant had “actual knowledge that Plaintiffs own all rights, title, and interest in the trademark METAPURSE,” that such references “have been willful, wanton, and in bad faith, and with intent to misrepresent Plaintiff’s business operations and successes as that of his own,” and that Venkateswaran “is attempting to exploit Plaintiff’s reputations and intellectual property to intentionally cause confusion among investors, artists, artist estates, trade conference organizers and organizations, scholars, publishers, and other market participants, hoping people choose to do business with him and his associated businesses, mistakenly believing that ... he remains associated with Plaintiffs and their business” plausibly alleged bad faith. What’s the difference?

The NFU factors didn’t help because they were “often heavily factual and thus ill-suited for the motion-to-dismiss stage.” Most notably, “the third element of the nominative fair use defenses requires that the use of the trademark not create a likelihood of confusion as to the mark-holder’s sponsorship, endorsement, or affiliation ... the existence of [which] necessitates focusing on ‘the minds of the relevant purchasers—an analysis based on a factual inquiry inappropriate to a motion to dismiss.’ ”

There was also “use in commerce” because Venkateswaran was promoting himself and his business ventures on LinkedIn.  

Reverse passing off claims, however, failed. Plaintiffs alleged that Venkateswaran represented to the public that he was more involved with the creation and management of TWOBADOUR and METAPURSE than he actually was, thus “passing off” the goods and services sold under those marks as his own. Under Dastar, prior involvement in the creation and promotion of a trademark is not “origin” of tangible goods or services, and thus misrepresentations as to same aren’t misrepresentations of “origin.”

False advertising: Plaintiffs didn’t plausibly allege “economic or reputational injury flowing directly from the deception wrought by the defendant’s advertising,” which usually occurs when “deception of consumers causes them to withhold trade from the plaintiff.” Where there is no allegation of a comparative advertisement, §43(a)(1)(B) requires “some affirmative indication of actual injury and causation.” There were no allegations of literal falsity, only “a subjective disagreement among the parties concerning the degree of Venkateswaran’s prior involvement with the business.” Nor did plaintiffs allege reputational damage.

State law consumer protection claims also failed because they didn’t allege harm to consumers; trademark confusion isn’t sufficient.

Puzzlingly, the court did find state law dilution plausibly pled because plaintiffs alleged that “Venkateswaran acted with hostility to Sundaresan’s and Portkey’s marks” and thus had predatory intent.