Surf’s up in mock trademark trial

The trial before the Honorable Irma Gonzalez (right), the Retired Chief Judge of the United States District Court for the Southern District of California, was the fictional Dolphin Surf Co v Porpoise Surf Boards. A respectful INTA audience all rose for the judge.

The mock trial, featured in the session Here Comes the Judge: See What Happens During a Mock Preliminary Injunction Hearing, concerned two similar surf boards. Both shared a fish tail shaped end, blue and white coloring, and an oval design with a stripe, two rectangles and the company name in the middle.

Arguing for the plaintiff Dolphin was Nancy Rubner Frandsen of Baker & Hostetler, who demanded Porpoise discontinue sale of its board. “The defendant purposely—or should I say porpoisely—chose a trade dress and mark that copied my client’s,” began Frandsen. “There can be no doubt that the defendant is intentionally infringing my client’s intellectual property by its choice of trade dress.”

She revealed that one customer had tried to return a Porpoise board to Dolphin and a potential customer had rung Dolphin and tried to buy a Porpoise board.

Arguing for the defendant Porpoise was Barry Cohen of Royer Cooper Cohen Braunfeld, who said the dispute came down to two words that were not similar. “Plaintiff inaccurately believes that there must be confusion among these two marine mammals—but they are two different species, like cats and dogs,” said Cohen. “Dolphins and porpoises should be allowed to peacefully co-exist as surf boards.”

So help you J. Scott Evans

Enter the witnesses, who were sworn in with the oath: “Do you solemnly swear to tell the truth, the whole truth, and nothing but the truth so help you J. Scott Evans?”

“Surfers are a unique breed. I assume Your Honor surfs?”

Dolphin owner Ms. Johnnie Utah (Debra Duguid of Terex), a respected former FBI agent, revealed her reaction “was utter shock” when she saw the Porpoise board. She said Dolphin had sold 200 of its boards in the past two years for $1,000 each.

Under cross-examination, she revealed that Dolphin does not a have a trademark registration for the look and design of the board, but does have a trademark on its name. She also conceded that the fish tail design serves a function, allowing surfers to cut through waves more easily, as well as revealing she thought dolphins and porpoises were both fish.

Proceedings took a turn towards the ridiculous with the arrival on the witness stand of Porpoise owner Jeffrey Spicoli (Chris Turk of The H.D. Lee Company), who received an immediate rebuke from the judge for his relaxed clothing of a Clash t-shirt. “Surfers are a unique breed,” offered Cohen. “I assume Your Honor surfs?”

Highlights of Spicoli’s testimony included referring to the judge as “Your Honorable Dudette”, claiming he had surfed the English Channel, and jumping up on the stand to show the judge how to surf. The trial was then interrupted by a cry of “who ordered the peperoni pizza?” It seems this had been ordered by Spicoli. Cohen interjected: “Can I just give a blanket apology now that will cover everything else.”

Spicoli argued that he did not copy the Dolphin board. The placement of the Porpoise name had been suggested by his marketing people, he said, claiming that the rectangular lines on his design “show where to put your feet when you’re really hungover.”

Under cross-examination, he revealed he had “partied” with the plaintiff. He also gave his take on the two animals: “One is a fish, one is not”.

In closing, plaintiff attorney Frandsen said that Porpoise’s “infant business” was “trying to ride on the fish tails of my client”. “The risk that this might close his business is the risk he took when he took my client’s design,” she added.

Cohen countered by arguing blue and white are very common colors, the plaintiff had shown no survey testimony or customer testimony, and Dolphin needed to demonstrate secondary meaning and that its design features are non-functional. “Strip away all of that and it is down to two words, like apples and oranges” he said.

“I just think there is likelihood of confusion for the average consumer who doesn’t know much about mammals­—they really do look similar."

A quick poll of registrants revealed the majority would deny the preliminary injunction.

Judge Gonzalez gave her verdict: “I would grant it where the trademark is concerned and deny it as far as trade dress. There is no getting around the function of this fish tail.” She added she was not sure it had acquired secondary meaning.

She said Spicoli’s “credibility is really not very good, and there might be an argument he copied trade dress.”

On the trademark, she said: “I just think there is likelihood of confusion for the average consumer who doesn’t know much about mammals­—they really do look similar. The mark is registered and that really helps. It is a really strong trademark, and I think the likelihood they will prevail in a trial is very high.”

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