MEMORANDUM
TO: Professor Risch
FROM: Christopher Lanks
DATE: April 21, 2008
RE: Cyber Law Case Brief – Writing Assignment
CASE
Punch Clock, Inc. v. Smart Software Dev., 2008 U.S. Dist. LEXIS 27849 (D. Fla. 2008)
Decided April 7, 2008
BACKGROUND
Punch Clock, Inc. ("PCI") is a Florida corporation that sells a time clock and payroll computer software program through their website www.punchclock.com. PCI also has a federally registered trademark “PUNCH CLOCK†which it has used since 1993.
Smart Software Development ("SSD") is a Canadian corporation which sells a time keeping computer software program identified as “PUNCH CLOCK†throughout North America, including Florida. SSD sells is software through a website www.punch-clock.com which was launched in September 2001.
PCI alleges that SSD has created confusion among customers as to which company sold them the product. Additionally, when “punch clock†or “punch-clock†into Google, SSD’s website is displayed ahead of PCI’s website. PCI attempted to notify SSD that they were infringing PCI’s trademark, but SSD stated that they were a Canada corporation and as such, were not violating PCI’s trademark. PCI sued SSD in the Southern District of Florida for federal trademark infringement, violations of the Anti-Cybersquatting Consumer Protection Act ("ACPA"), and violations of Section 43(a) of the Lanham Act.. At the start of the present litigation SSD changed the name of their website to www.lionclock.com. However, entering “punch clock†or “punch-clock†into Google stills provides users with a link to the SSD’s website.
PCI has moved this Court for a default judgment as SSD has fired counsel and has refused to cooperate in the present litigation.
ANALYSIS
1. The federal trademark infringement claim:
Under 15 U.S.C. § 1114(1)(a), a person must "use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark" which "is likely to cause confusion, or to cause mistake, or to deceive." In order to prevail under 15 U.S.C. § 1114(1)(a) PCI must demonstrate that the SSD used its mark in commerce, without its consent, and that SSD’s mark is likely to cause consumer confusion. See Int'l Cosmetics Exch., Inc. v. Gapardis Health & Beauty, Inc., 303 F.3d 1242 (11th Cir. 2002).
In the present case, PCI has demonstrated that not only is SSD’s use of the “Punch Clock†likely to cause consumer confusion, but that it in fact already caused extensive confusion over several years. PCI has offered into evidence email correspondence from confused customers ever since SSD began using the “Punch Clock†name. Therefore the Court granted PCI a default judgment on their federal trademark infringement claim.
2. The ACPA claim:
In order for PCI to prevail under their ACPA claim, they must prove that (1) its mark is distinctive or famous and entitled to protection; (2) SSD’s domain name is identical or confusingly similar to PCI’s mark; and (3) SSD registered or used the domain name with a bad faith intent to profit." See Bavaro Palace, S.A. v. Vacation Tours, Inc., 203 Fed. Appx. 252, 256 (11th Cir. 2006).
PCI has demonstrated that its mark is distinctive by introducing evidence showing that the "Punch Clock" mark is registered and as such, under 15 U.S.C. § 1052(e), only marks not "merely descriptive" may be registered. PCI has also established that the SSD’s domain name, "www.punch-clock.com" is almost identical to "www.punchclock.com." Furthermore, PCI has demonstrated SSD’s bad faith intent to profit through its complaint alleging SSD's intent to divert consumers from PCI through the use of www.punch-clock.com, and the by the facts that SSD is continuing in its infringing activity at this time. Therefore, the Court granted PCI a default judgment on the ACPA claim.
3. The Lanham Act claim:
In order for PCI to prevail under Section 43(a) of the Lanham Act, PCI must show (1) that it had prior rights to the mark at issue, and (2) that SSD adopted a mark or name that was the same, or confusingly similar to, PCI’s mark such that consumers were likely to confuse the two. See Planetary Motion, Inc. v. Techsplosion, Inc., 261 F.3d 1188, 1193 (11th Cir. 2001).
The Court noted that PCI had already established, under the above claims, that they had prior rights and that SSD had used both the identical mark, as well as the variation "punch-clock," and that SSD’s use caused confusion to consumers. As such, the Court granted PCI a default judgment on the Lanham Act claim.
TO: Professor Risch
FROM: Christopher Lanks
DATE: April 21, 2008
RE: Cyber Law Case Brief – Writing Assignment
CASE
Punch Clock, Inc. v. Smart Software Dev., 2008 U.S. Dist. LEXIS 27849 (D. Fla. 2008)
Decided April 7, 2008
BACKGROUND
Punch Clock, Inc. ("PCI") is a Florida corporation that sells a time clock and payroll computer software program through their website www.punchclock.com. PCI also has a federally registered trademark “PUNCH CLOCK†which it has used since 1993.
Smart Software Development ("SSD") is a Canadian corporation which sells a time keeping computer software program identified as “PUNCH CLOCK†throughout North America, including Florida. SSD sells is software through a website www.punch-clock.com which was launched in September 2001.
PCI alleges that SSD has created confusion among customers as to which company sold them the product. Additionally, when “punch clock†or “punch-clock†into Google, SSD’s website is displayed ahead of PCI’s website. PCI attempted to notify SSD that they were infringing PCI’s trademark, but SSD stated that they were a Canada corporation and as such, were not violating PCI’s trademark. PCI sued SSD in the Southern District of Florida for federal trademark infringement, violations of the Anti-Cybersquatting Consumer Protection Act ("ACPA"), and violations of Section 43(a) of the Lanham Act.. At the start of the present litigation SSD changed the name of their website to www.lionclock.com. However, entering “punch clock†or “punch-clock†into Google stills provides users with a link to the SSD’s website.
PCI has moved this Court for a default judgment as SSD has fired counsel and has refused to cooperate in the present litigation.
ANALYSIS
1. The federal trademark infringement claim:
Under 15 U.S.C. § 1114(1)(a), a person must "use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark" which "is likely to cause confusion, or to cause mistake, or to deceive." In order to prevail under 15 U.S.C. § 1114(1)(a) PCI must demonstrate that the SSD used its mark in commerce, without its consent, and that SSD’s mark is likely to cause consumer confusion. See Int'l Cosmetics Exch., Inc. v. Gapardis Health & Beauty, Inc., 303 F.3d 1242 (11th Cir. 2002).
In the present case, PCI has demonstrated that not only is SSD’s use of the “Punch Clock†likely to cause consumer confusion, but that it in fact already caused extensive confusion over several years. PCI has offered into evidence email correspondence from confused customers ever since SSD began using the “Punch Clock†name. Therefore the Court granted PCI a default judgment on their federal trademark infringement claim.
2. The ACPA claim:
In order for PCI to prevail under their ACPA claim, they must prove that (1) its mark is distinctive or famous and entitled to protection; (2) SSD’s domain name is identical or confusingly similar to PCI’s mark; and (3) SSD registered or used the domain name with a bad faith intent to profit." See Bavaro Palace, S.A. v. Vacation Tours, Inc., 203 Fed. Appx. 252, 256 (11th Cir. 2006).
PCI has demonstrated that its mark is distinctive by introducing evidence showing that the "Punch Clock" mark is registered and as such, under 15 U.S.C. § 1052(e), only marks not "merely descriptive" may be registered. PCI has also established that the SSD’s domain name, "www.punch-clock.com" is almost identical to "www.punchclock.com." Furthermore, PCI has demonstrated SSD’s bad faith intent to profit through its complaint alleging SSD's intent to divert consumers from PCI through the use of www.punch-clock.com, and the by the facts that SSD is continuing in its infringing activity at this time. Therefore, the Court granted PCI a default judgment on the ACPA claim.
3. The Lanham Act claim:
In order for PCI to prevail under Section 43(a) of the Lanham Act, PCI must show (1) that it had prior rights to the mark at issue, and (2) that SSD adopted a mark or name that was the same, or confusingly similar to, PCI’s mark such that consumers were likely to confuse the two. See Planetary Motion, Inc. v. Techsplosion, Inc., 261 F.3d 1188, 1193 (11th Cir. 2001).
The Court noted that PCI had already established, under the above claims, that they had prior rights and that SSD had used both the identical mark, as well as the variation "punch-clock," and that SSD’s use caused confusion to consumers. As such, the Court granted PCI a default judgment on the Lanham Act claim.