Cancellation of Trademark, Declaratory Judgment of Non-Infringement, Litigation Update, Stacie F. Beckerman, State Declaratory Judgment of Non-Infringement and No Unfair Competition
The Plaintiff in this action, Highbrow, LLC, seeks a declaratory judgment that its use of the “HIGHBROW” trademark in connection with an online beauty website does not infringe or otherwise violate the rights of Defendant Highbrow Magazine, LLC.
Highbrow Magazine is a “politically liberal, general-interest magazine covering News & Politics, Media, Arts & Entertainment, Food, and Travel.”
According to the Complaint (below), Highbrow was threatened with litigation by Highbrow Magazine and thus preemptively filed this declaratory action in Oregon. A series of discussions over a non-litigious resolution were unsuccessful.
There is some interesting language in the final demand letter from Highbrow Magazine (see Exhibit 5) that arguably forced the hand of Highbrow:
Note that we have also sent this letter to your domain registrar and Web hosting company, which means that they may be liable for contributory infringement for any continuing trademark infringement subsequent to receipt of this notice.
By bringing the registrar and web host into the situation, Highbrow was left with really no other option but to seek a court’s declaration of non-infringement. Better in Oregon than New York for many reasons for the Portland-based Highbrow.
[Update – The parties settled and a Notice of Voluntary Dismissal was filed on 5/10/16]
Highbrow, LLC v. Highbrow Magazine, LLC et al
Court Case Number: 3:16-cv-00544
File Date: Tuesday, March 29, 2016
Plaintiff: Highbrow, LLC
Plaintiff Counsel: Susan Bristow-Ford of Bristow-Ford Law
Defendant: Highbrow Magazine, LLC
Cause: Declaratory Judgment of Non-Infringement, Cancellation of Trademark, State Declaratory Judgment of Non-Infringement and No Unfair Competition
Judge: Stacie F. Beckerman