July/August 2010 Issue

Civil Cases

Masters Software, Inc. v. Discovery Commc’ns, Inc.,
No. C10-405RAJ (W.D. Wash. July 16, 2010)

ABSTRACT
The Western District of Washington issued a preliminary injunction against defendant Discovery Communications, prohibiting it from using CAKE BOSS as the title of its reality television program about baker Buddy Valastro and his bakery in New Jersey beyond the third season.  Although defendant argued that the First Amendment protected its title selection, the court found that because the title did not “allude to” plaintiff’s business, the claim “did not implicate the First Amendment interests” protected in Rogers v. Grimaldi and its progeny.

CASE SUMMARY

FACTS
Masters Software, Inc. (“Masters”) is a software company that owns a federal registration for the mark CAKEBOSS for computer software for bakery-business management, online instruction in the field of baking cakes, and providing information in the field of culinary arts via the Internet.  Masters also operates a website at cakeboss.com, offering software to professional bakers and providing free recipes and baking materials.  Upon learning that Discovery Communications, Inc. (“Discovery”) intended to air a reality television series about baker Buddy Valastro and the antics in his New Jersey bakery under the title CAKE BOSS, Masters objected.  Discovery refused to change the name and then objected when Masters began offering cake-decorating products under the CAKEBOSS mark.  A year after originally objecting to the title, Masters sought preliminary injunctive relief. 

ANALYSIS
The court found that Masters was likely to succeed on the merits of its reverse-confusion claim.  Although the mark CAKE BOSS was deemed suggestive as used by both parties, the court found that Discovery’s mark had significant marketplace strength.  Moreover, Masters put forth significant evidence of actual confusion.  Although the court noted that software and a television show typically would not be considered related, because the audience to which both parties cater, i.e., persons interested in cake baking, is a relatively small market niche, it concluded that the goods/services were related.  Combined with the identity of the marks and the fact that it believed Discovery had acted in bad faith in proceeding with the title, the court found that the Sleekcraft likelihood-of-confusion factors favored Masters. 

The court was also heavily influenced by Mr. Valastro’s objection, presumably with Discovery’s backing, to Masters’ sales of CAKEBOSS cake-decorating products and threat to sue if Masters did not stop.  The court noted that this “conduct in squelching [Masters’] effort to market CakeBoss-branded case bakeware is inconsistent with their contention that there is no likelihood of confusion between the marks.”

Turning to what it deemed “Discovery’s First Amendment defense,” the court considered Discovery’s contention that its choice of CAKE BOSS as the title of an expressive work was entitled to more protection than a typical trademark use.  After reciting the fact scenarios present in the leading First Amendment/trademark cases Rogers v. Grimaldi, 875 F.2d 994 (2d CIr. 1989), and Mattel v. MCA Records, 296 F.3d 894 (9th Cir. 2002), the court found that Masters’ “claim against Discovery does not implicate the First Amendment interests recognized in Mattel and Rogers” because “Discovery did not choose the name of Cake Boss as an allusion to CakeBoss,” as had been the case in Rogers (an allusion to Ginger Rogers and Fred Astaire) and Mattel (an allusion to the BARBIE doll).  Specifically, the court found that

Discovery was expressing nothing more than what any user of a suggestive trademark expresses when branding its product, and the Lanham Act’s limitations on such “expressions” do not violate the First Amendment . . . . Were it otherwise, the use of a trademark in the title of an expressive work would never violate the Lanham Act so long as it had some connection to the work’s content.  Rogers and Mattel do not express such a rule, but rather a balancing of expressive interests and trademark interests.  Put in the language of the Rogers balancing test, the public interest in allowing Masters to avoid the consumer confusion that Cake Boss has created outweighs the expressive interest (if any) inherent in Discovery’s choice of title.

Finding a likelihood of success on the merits and irreparable harm (despite a one-year delay in bringing suit), the court issued a preliminary injunction requiring Discovery to cease using the name “Cake Boss” to identify its television program at the conclusion of the third season.  Discovery was also ordered to immediately cease sales of all merchandise related to the television program, although it was allowed to sell off existing inventory.

CONCLUSION
While the court’s conclusion that the Rogers balancing test is applicable only where the title of the creative work somehow alludes to Masters or its mark is flawed, and Discovery’s CAKE BOSS title was clearly artistically relevant to its show about the “boss” of a cake bakery, the decision elucidates that in cases involving a reality show about a real business (i.e., not a fictional or coincidental use involving use of real-life marks for fictional names/businesses within creative works), it may be more appropriate to compare the plaintiff’s business or products/services to the underlying real business in the show (instead of to the show itself).