Here’s a new twist in the BitTorrent download saga in Oregon. Rather than the typical strategy of pursuing copyright infringement claims in federal court, Voltage Pictures is now going after 50 John Doe defendants in Oregon state court on state trademark claims.
Defendants are alleged to have “without the authorization or consent of plaintiff, used, copied and/or distributed a reproduction, counterfeit and copy of plaintiff’s motion picture bearing plaintiff’s registered trademark VOLTAGE PICTURES.”
It’s a novel strategy, but perhaps with a few flaws. For one, it will be an uphill battle to argue that Defendant’s uploading/downloading of a digital file amounts to distribution that is likely to cause confusion as to source. Notably, a Plaintiff can only recover damages or profits under Oregon state trademark law if the trademark was used with the intent to cause confusion or mistake or to deceive (ORS 647.095 (2)). Similar to the federal “nominative fair use” exemption, a Defendant is permitted to use another party’s trademark to reference that party’s goods or services.
It will be interesting to see how the State Court handles this lawsuit. Stay tuned for updates.
Voltage Pictures, LLC v. Does 1-50
Court Case Number: 14C13823
File Date: Thursday, April 3, 2014
Plaintiff: Voltage Pictures, LLC
Plaintiff Counsel: Carl D. Crowell, Crowell Law
Defendant: Does 1-50
Cause: Oregon State Trademark Infringement
Court: Circuit Court of the State of Oregon for the County of Marion
I think the “shifting strategy” headline is an overkill. Like Prenda before them, this particular network of attorneys and German coordinators are trying different approaches, throw-noodles-at-the-wall style. Maybe some will stick, but not this particular type of abuse. This “strategy” won’t last long, believe me.
I believe that trademark question is secondary, it is only a mean of hiding a fishing expedition from scrutiny — in the opaqueness of a state court (and take advantage of judges that are most likely less sophisticated and, frankly, more prone to be influenced).
BTW, Keith Lipscomb explored trademark infringement in mass bittorent cases two years ago and failed.
Kenan Farrell said:
Fair enough. “Shifts strategy in Oregon” it should read.