Intellectual Property Law

Ninth Circuit Affirms Dismissal of Lanham Act Claims for Lack of Use in Commerce

By Michael Atkins

In his second go-round on appeal, pro se plaintiff Robert Guichard didn’t fare any better against defendant Universal City Studios LLLP than he did in his first.

Mr. Guichard is an independent movie producer. Universal is a big Hollywood studio.

Mr. Guichard claimed he gained exclusive rights to the word “whisper” in connection with movies through the launch of his WHISPER OF THE BLUE Web site that publicizes his unproduced screenplay of the same name and information about his proposed film. He sought to enjoin Universal from using “Whisper” as the title of its film, which had been in production since Nov. 2004. (It’s now on DVD.)

In Feb. 2008, the Northern District of California dismissed Mr. Guichard’s trademark claims on summary judgment, finding his use of the alleged trademark did not satisfy the “use in commerce” requirement needed to establish priority of use.

The court found: “Although Plaintiff alleges that there have been multiple visits to his website since its launch on February 4, 2006, this minimal use does not establish ‘use in commerce’ as required to establish priority. There is no showing that Plaintiff has used his mark in the actual sale or advertising of services in commerce.”

On Dec. 14, without much comment, the Ninth Circuit affirmed. (“The district court properly granted summary judgment in favor of Universal on Guichard’s Lanham Act claim.”)

In Dec. 2007, the Ninth Circuit similarly affirmed the district court’s denial of Mr. Guichard’s motion for preliminary injunction. (STL post here.)

The case cite is Guichard v. Universal City Studios LLLP, 2009 WL 4884582, No. 08-15581 (9th Cir. Dec. 14, 2009).

Full post as published by Seattle Trademark Lawyer on January 05, 2010 (boomark / email).