It was the overwhelming popularity of The Learning Channel's "Cake Boss" reality TV show, starring Hoboken's irascible Buddy Valastro and his extended family, that brought down the media powerhouse in a battle with a small software company in Seattle.
A federal judge in Seattle has entered a preliminary injunction in favor of the makers of the bakery software "CakeBoss" that requires TLC to change the name of the show after the current season has aired and prohibits the use of the name in reruns. The decision speaks volumes about the wisdom of clearing a name before investing substantial amounts of promoting money in a name. Masters Software, Inc. v. Discovery Communications, Inc. (W.D. Wash. Case No. C10-405RAJ) (July 16, 2010).
The developers of CakeBoss, Master's Software Inc. won the preliminary injunction in a "reverse contusion" trademark infringement case, one in which the senior user — the party that first used the mark — is being confused with a party that began using the mark at a later date — the junior user. In this case, the plaintiff sued because it claimed it was being wrongly associated with the popular television show based on the work and familial drama surrounding the ovens at Carlos Bakery in Hoboken.
Most often, infringement suits work the other way. The junior user is accused of trying to trade on the good will that has become associated with the mark owned by the senior user.
CakeBoss is the name given by Kelley and John Masters to software that they began to sell in 2007 to professional cake bakers. Master's also has a website, www.cakeboss.com, on which they sold the software and also provided other information like recipes and tutorials.
The TV show Cake Boss was announced by TLC in March 2009. Kelley masters heard about the new show and notified both TLC and later Buddy Valastro that she was already using the name. Discovery went ahead and developed the show with the Cake Boss name.
Masters claimed in its lawsuit that as the show gained popularity, it was overwhelmed by consumers who wrongly presumed that the Seattle company was affiliated with the show. It's website was at times inundated and they received numerous communications that were intended for the television producers.
In granting the preliminary injunction, the district judge held that Masters was likely to prevail in its claim that consumers are likely to believe that CakeBoss is affiliated with or sponsored by Cake Boss. The court conducted the traditional 8-factor analysis considering such factors as the strength of the mark, the proximity of the goods in the marketplace and evidence of actual confusion.
The court held that plaintiff had demonstrated a likelihood of irreparable harm and that the equities of the matter weighed in favor of the smaller user. In particular, the court noted that any type of search would likely have turned up the CakeBoss website.
Meanwhile, TLC's request that the court require plaintiff to post a $10,000,000 bond as security was rebuffed. The judge required a bond of $10,000, capping what by all appearances was a David vs. Goliath victory in which Seattle sole practitioner Katie Long prefailed against IP powerhouse Arent Fox.
