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Balance Studio, Inc. v. Cybernet Entertainment, LLC

United States District Court, N.D. California

June 8, 2017

BALANCE STUDIO, INC., Plaintiff,
v.
CYBERNET ENTERTAINMENT, LLC, Defendant.

          ORDER DENYING DEFENDANT'S MOTION FOR SUMMARY JUDGMENT RE: DKT. NO. 80

          Donna M. Ryu, United States Judge

         Plaintiff Balance Studio, Inc., doing business as Kink Academy and KinkAcademy.com (“Kink Academy”), sues Defendant Cybernet Entertainment, LLC, doing business as Kink.com, for violations of the Lanham Act, 15 U.S.C. §§ 1114, 1125, and state law. Defendant moves for summary judgment. [Docket No. 80.] The court held a hearing on May 25, 2017. Having considered the parties' oral argument and written submissions, and for the reasons stated below as well as at the hearing, the court denies Defendant's motion.

         I. BACKGROUND

         A. Factual Background

         The following facts are undisputed, unless otherwise noted. Plaintiff is a business that offers adult sexual education. [Docket No. 83-1 (Williams Decl., May 4, 2017) ¶ 4.] Plaintiff offers services through its website, kinkacademy.com, as well as seminars and coaching services by its founder, Kali Williams, that “focus on empowerment, confidence, and communication.” Id. at ¶¶ 1, 4. Plaintiff launched the kinkacademy.com website in 2009. Id. at ¶ 8.

         On April 1, 2009, Plaintiff applied for registration of its “Kink Academy” word and logo mark. [Docket No. 80-1 (Swanson Decl., Apr. 20, 2017) Ex. BB (Kink Academy application).][1]

         (Image Omitted)

         On May 10, 2011, the USPTO granted Plaintiffs application and issued U.S. Trademark Registration Number 3958399 for the "Kink Academy" word and logo mark, as depicted below:

         Swanson Decl. Ex. C (Kink Academy registration). According to the USPTO registration, Plaintiffs word and logo mark was first used on February 1, 2007 and first used in commerce on April 1, 2009. Id. It describes the mark as follows:

The mark consists of large letter "K" in the color purple with a white and purple outline, a stylized graduation cap in black on top of the left leg of the "K", a black leash attached to the lower leg of the "K" going up and around to the left in a circular manner, with the text "Kink Academy" in black underneath the "K".

Id. The Kink Academy word and logo mark is registered in International Class 041 for "adult sexuality education, namely, through workshops, seminars, on-line video classes featuring information on adult role-play, bondage, domination and submission, fetishes and gender exploration designed to enhance couple's [sic] intimacy, and acknowledgement of one's own sexuality." Id.

         Prior to the issuance of the registration, on July 1, 2009, the USPTO directed Plaintiff to disclaim the word "academy" in the mark "because it refers to the educational component of the identification" and was could not be registered. Swanson Decl. Ex. D (July 1, 2009 Office Action). It appears that Plaintiff then took no action on the application for several months, for on 80-1). It also filed a separate request for judicial notice of that documentation. [Docket No. 81.] Judicially noticeable facts are those not subject to reasonable dispute because they are "capable of accurate and ready determination by resort to sources whose accuracy cannot reasonably be questioned." Fed.R.Evid. 201(b)(2). A court may take judicial notice of "records and reports of administrative bodies." Mack, 798 F.2d at 1282 (citation omitted). Plaintiff does not object to the court taking judicial notice of the USPTO documentation regarding registration of the Kink Academy mark. Accordingly, the court grants Defendant's request and takes judicial notice of Exhibits A through BB. See Oroamerica Inc. v. D&WJewelry Co., Inc., 10 Fed.Appx. 516, 517 n.4 (9th Cir. 2001) (taking judicial notice of USPTO registration certificates, patent file history, and patent application materials). March 23, 2010, Plaintiff filed a petition to revive its abandoned application in which it disclaimed the “exclusive right to use Academy apart from the mark as shown.” Id. Ex. E. The USPTO subsequently directed Plaintiff to disclaim the word “kink” as “merely descriptive of the subject matter of [Plaintiff's] adult sexuality education services . . .” Id. at Ex. F (Mar. 31, 2010 Office Action). On April 6, 2010, Plaintiff amended its disclaimer to read, “[n]o claim is made to the exclusive right to use “KINK ACADEMY” apart from the mark as shown.” Id. at Ex. G.

         Defendant is “a company that produces and markets BDSM[2] videos and materials, which [it] make[s] available to [its] members online, through [the] www.Kink.com website, its subchannels and affiliated third parties.” [Docket No. 80-2 (Acworth Decl., Apr. 18, 2017) ¶ 2.] According to its founder, Peter Acworth, Defendant “has been branded as Kink and Kink.com, ” and “has been known and referred to as Kink since at least 2006.” Id. at ¶¶ 3, 4. Plaintiff's founder Williams states that Kink.com offers “[h]ard-core extreme porn entertainment; webcam video chat virtual prostitution services; and porn industry advocacy.” Williams Decl. ¶ 18.

         Although not clear from the record, in approximately 2014, [3] Defendant began operating a “Kink University” website accessible at kinkuniversity.com, and sought to trademark the term “Kink University.” See Compl. ¶ 15; Swanson Decl. Ex. H (USPTO rejection of Defendant's application). Defendant sought to register the term “Kink University” in the area of “[e]ducation services, namely, providing live and on-line classes, panel discussions, tutorials, seminars, and workshops in the field of sexuality.” Id. The USPTO rejected Defendant's application on July 23, 2014, finding a likelihood of consumer confusion between “Kink University” and Plaintiff's Kink Academy word and logo mark. Id. (“Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 3958399.”). The USPTO explained the likelihood of confusion between Defendant's proposed “Kink University” mark and Plaintiff's registered Kink Academy word and logo mark as follows:

In terms of the marks, the proposed mark is KINK UNIVERSITY, while the cited mark is comprised of the letter K with the design of a mortarboard and leash and the terms KINK ACADEMY. Considering that the terms UNIVERSITY and ACADEMY are descriptive for the educational services and that literal elements dominate over design elements, the dominant components of the marks are both KINK. . . .
In this case, despite the differences in the marks, the terms UNIVERSITY and ACADEMY, each coupled with the dominant component KINK, convey the same idea, i.e., a traditional institute of higher learning juxtaposed next to the informal slang term for an unusual sexual preference. Therefore, the marks are similar in sound, appearance, and commercial impression.
With respect to the services, those of the proposed mark are “Education services, namely, providing live and on-line classes, panel discussions, tutorials, seminars, and workshops in the field of sexuality”, while those of the cited mark are “Adult sexuality education, namely, through workshops, seminars, on-line video classes featuring information on adult role-play, bondage, domination and submission, fetishes and gender exploration designed to enhance couple's intimacy, and acknowledgment of one's own sexuality”. Because both of the services are educational services related to the topic of sexuality, they are related such that there is a likelihood of confusion if both of the marks were used for the respective services.

Id.

         On April 14, 2015, the USPTO issued a final rejection of Defendant's trademark application for “Kink University, ” reiterating that the two marks “convey a similar commercial impression, ” and that the use of the term “Kink University” would likely cause consumer confusion with the “Kink Academy” word and logo mark. Swanson Decl. Ex. J.

         B. Procedural History

         Plaintiff filed the complaint on September 3, 2015. It alleges that despite the USPTO's determination, Defendant continues to infringe Plaintiff's Kink Academy word and logo mark by using the confusingly similar “Kink University” mark, and that the Kink University website is “designed to take advantage of the significant name recognition and goodwill surrounding Kink Academy and its products.” Compl. ¶¶ 24, 25. According to Williams, Kink Academy “offers adult sexual education” with a focus on “building trust and intimacy through bondage and sadomasochism, ” as well as “empowerment, confidence, and communication.” Williams Decl. ¶ 4. In contrast, “Defendant uses their ‘Kink University' brand in connection with porn services including live chat rooms and pornographic videos.” Id. at ¶ 7. Williams states that “Kink University is not truly an educational branch of Defendant's business.” Id. Plaintiff further alleges that it has suffered monetary damage in the form of diverted traffic and lost sales, and that Defendant is damaging the valuable reputation and goodwill in Plaintiff's brand by “marketing pornography videos under the guise of educational videos.” Id. at ¶ 26. Finally, Plaintiff alleges that actual confusion has already occurred between Kink Academy and Kink University, id. at ¶ 27, and submits evidence of what it claims is actual consumer confusion between the two businesses. See Williams Decl. ¶ 15 Ex. C. Plaintiff alleges the following claims for relief: 1) trademark infringement under 15 U.S.C. § 1114; 2) false designation of origin under 15 U.S.C. § 1125(a); and 3) unfair competition under California Business & Professions Code § 17200 et seq. (“UCL”).

         Defendant filed a counterclaim for cancellation of Plaintiff's Kink Academy word and logo mark. [Docket No. 50.] It also alleges counterclaims against Plaintiff and its founder, Kali Williams, for trademark infringement under 15 U.S.C. § 1114, false designation of origin under 15 U.S.C. § 1125(a), and unfair competition under the UCL. Defendant now moves for summary judgment on all of Plaintiff's claims.

         II.LEGAL ...


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