Fryer v. Brown

Citation: Fryer v. Brown, 2005 WL 1677940 (W.D. Wash. July 15, 2005) (Brown's summary judgment motion); 2005 WL 1871112 (W.D. Wash. Aug. 3, 2005) (Gilmore's summary judgment motion).

Factual Background
Plaintiff worked in the auto upholstery industry for over 30 years and operated the business "Fryer's Auto Upholstery" since 1982. Plaintiff promoted its business at the domain name "autoupholsterykits.com" since May 2000 and registered the copyright in the website in February 2004. Defendant Brown worked in the auto upholstery industry for many years, including as an independent contractor for plaintiff in October 2001. In July 2002, Brown established a competing business called "ABC Auto Upholstery" and hired defendant Gilmore to design a website at the domain name "autoupholsterykit.com."

Trial Court Proceedings
Plaintiff sued for cybersquatting and copyright infringement. In an earlier decision, the court granted plaintiff's motion for a preliminary injunction against defendants' use of its domain name, finding that the domain names "autoupholsterykits.com" and "autoupholsterykit.com" were confusingly similar.

Brown later sought summary judgment on both claims. Brown argued that the cybersquatting claim should be dismissed because the domain name "autoupholsterykits.com" was generic and thus not protectable. Alternatively, if the court considered plaintiff's domain name descriptive, defendant argued the domain name had not acquired secondary meaning, noting that plaintiff did not provide any consumer testimony or surveys and that plaintiff's advertising did not emphasize the domain name.

Plaintiff argued that Brown knew of plaintiff's website and questioned plaintiff extensively about his business. Plaintiff also argued that secondary meaning existed because customers who called usually asked for "autoupholsterykits.com" and not "Fryer's Auto Upholstery."

Assuming the facts in the light most favorable to the non-moving party (i.e., plaintiff), as it must do on summary judgment, the court found that Brown intentionally copied plaintiff's domain name, which gave rise to presumptions of both secondary meaning and a likelihood of confusion. The court thus denied summary judgment on the cybersquatting claim. Regarding the copyright infringement claims, the court held that there were genuine issues of material fact as the similarity of the websites and denied summary judgment. However, the court agreed with defendant that plaintiff's domain name was not protected by copyright and granted summary judgment on plaintiff's domain name copyright infringement claim.

Defendant Gilmore also moved for summary judgment. The court granted summary judgment on plaintiff's cybersquatting claim because there was no evidence that Gilmore "used" the trademark as required by the ACPA. The court stated that "[w]hen a domain name is used only to indicate an address on the internet, the domain name is not functioning as a trademark." The court also granted summary judgment on all claims alleging copyright infringement of the words "autoupholsterykits." However, the court denied Gilmore's summary judgment motion on plaintiff's copyright infringement claims regarding website style, design, and content due to genuine issues of material fact.

This page uses content from Finnegan’s Internet Trademark Case Summaries. This entry is available under the GNU Free Documentation License.