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Universal Tube and Rollform Equipment Corp. v. YouTube Inc.


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Universal Tube & Rollform Equipment Corp. v. YouTube?, Inc. (N.D.Ohio June 4, 2007)

Facts
As the court jested in its opinion, “this is a case of two very different types of tubes.” 504 F.Supp.2d 260, 263. Universal Tube and Rollform Equipment Corporation (“Universal”) is a supplier of “used tubes” and pipe mills. Youtube, Inc. operates a popular internet website featuring user-posted videos and media.

Universal owns the rights to the website “utube.com.” Universal purchased these rights in 1996, and also applied for federal registration of the UTUBE mark (though the mark was never officially registered). Youtube, Inc. subsequently purchased the rights to the website “youtube.com” in 2005.

Claiming unfair competition and various other violations of the Lanham Act, Universal brought an action in federal district court seeking money damages, attorneys fees, injunctive relief, transfer of the domain name “youtube.com” to Universal, delivery of profits from the operation of “youtube.com”, and the cancellation of a trademark application filed by Youtube, Inc.

Procedural Posture
Universal filed a complaint in the Federal District Court for the Northern District of Ohio. Youtube, Inc. moved to dismiss the complaint on all grounds.

Issue
Can Universal’s claim of trademark infringement under the Lanham Act withstand a motion to dismiss when the trademark in question was never officially registered?

Holding
Yes. The Lanham Act provides a cause of action for infringement of a mark that has not been federally registered. 15 U.S.C. §1125(a).

Reasoning
Neither the Supreme Court nor the Sixth Circuit has specifically delineated the level of detail necessary for allegations of a claim of infringement of an unregistered mark to overcome a motion to dismiss. Thus, the motion to dismiss “must be evaluated by construing the complaint in a light most favorable to the plaintiff, accepting all factual allegations as true, and determining whether the plaintiff can prove any set of facts to support his claims.” Perry v. Am. Tobacco Co., 324 F.3d 845, 848 (6th Cir.2003)

The Sixth Circuit has held that §1125(a) of the Lanham Act requires a plaintiff to prove: “1) ownership of a specific ... mark in connection with specific services; 2) continuous use of the ... mark; 3) establishment of secondary meaning if the mark is descriptive; and 4) a likelihood of confusion amongst consumers due to the contemporaneous use of the parties'” Homeowners Group, Inc. v. Home Marketing Specialists, Inc., 931 F.2d 1100, 1105 (6th Cir.1991). Although Youtube, Inc. argued that Universal did not plead facts which demonstrated the “use” requirement of §1125(a), the Court held that this pleading folly was not fatal to Universal’s underlying claim because federal courts are under a notice pleading regime and Youtube, Inc. had sufficient notice of Universal’s claims.

Collateral Issues
The Court denied Youtube, Inc’s motion to dismiss with regards to the unfair competition claim under the Lanham Act, a dilution claim under Ohio law, and a deceptive trade practices claim. The Court granted Youtube Inc.’s motion to dismiss with regards to the cancellation of Youtube’s trademark application, trespass to chattels, nuisance, negligence, and Ohio RICO Act claims.


Jessica L. Cook
April 22, 2010



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