Martha Elizabeth Inc. v. Scripps Networks Interactive LLC

Decision Date09 May 2011
Docket NumberCase No. 1:10-cv-1244
PartiesMARTHA ELIZABETH, INC., a Michigan corporation, and MARTHA RAPP, a Michigan resident, Plaintiffs, v. SCRIPPS NETWORKS INTERACTIVE, LLC, an Ohio corporation, SCRIPPS NETWORKS, LLC, a Delaware corporation, COOKING CHANNEL, LLC, a Delaware corporation, and B360 MEDIA, INC.., a Canadian corporation, Defendants.
CourtU.S. District Court — Western District of Michigan
OPINION ON PLAINTIFF'S APPLICATION
FOR PRELIMINARY INJUNCTION

This action arises under federal trademark law, namely the Lanham Act sections 32(1) and 43(a), codified at 15 U.S.C. §§ 1114(a) and 1125(a), with pendent claims for trademark infringement and unfair competition under Michigan common law and violation of the Michigan Consumer Protection Act (Mich. Comp. Laws § 455.901). The plaintiffs are Michigan corporation Martha Elizabeth, Inc. (hereinafter "MEI"), and its president, Michigan citizen Martha Rapp ("Rapp"), see Complaint filed December 15, 2010 ("Comp") ¶¶ 2-3. The defendants are Ohio corporation Scripps Networks Interactive, Inc. and Delaware/New York corporation Scripps Networks LLC (together "Scripps"), Delaware/New York corporationCooking Channel LLC ("Cooking Channel"), and Canadian corporation B360 Media, Inc. ("B360"), see Comp ¶¶ 4-7 and 32.

Scripps Networks, LLC is a subsidiary of Scripps Networks Interactive, Inc. See Affidavit of Michael Smith, General Manager of the Cooking Channel, executed March 14, 2011 ("Smith Aff") (Doc 21-2) ¶ 1. Scripps has two television networks related to food: the Food Network, which is intended to be "a large mass[-]appeal food channel that targets an all[-]American, mainstream audience, and The Cooking Channel, which was formed when Scripps rebranded its former Fine Living Channel (Comp Ex O) and is positioned "as a niche player in a smaller but passionate demographic" and offers "non-mainstream" programming which "covers a broader range of topics in greater depth", Smith Aff (Defs' PI Opp, Ex B) ¶¶ 2. B360, which was founded by Joshua Dorsey and Nadia Giosia in 2007, see Comp ¶ 32, "provides integrated media services-strategy, branding, design, production and deployment-to national and multinational clients" Comp Ex C (Bitchin' Kitchen website page). Giosia notes her background in marketing and has been featured in newspaper web-logs ("blogs") regarding methods for successfully building a brand, PI Ex 5 (Los Angeles Times blog article), while B360 president Dorsey has about ten years of experience as director of film, television, and "new media", Comp Ex D (Dorsey's profile n http: //www.linkedin.com).

Since 2002, plaintiff Rapp has owned a retail business specializing in products for the home chef, including "commonplace kitchen items such as aprons, cookbooks or spatulas, to exclusive gourmet products, as well as hard-to-find specialty goods and novelties", and does business both through a physical store located in Pentwater, Michigan ("the Bitchen Kitchen Shop") and through the website http: //www.thebitchenkitchen.com("the Bitchen Kitchenwebsite"), Comp ¶¶ 10-11, collectively referred to as "the BK business." Bitchen Kitchen was a continuation and expansion of a business which Rapp had owned since 1986 in the same Michigan town, Chez Moi, see Declaration of Martha Rapp executed February 8, 2011 ("Rapp Dec") ¶¶ 1, 3 & 6. Rapp chose the name Bitchen Kitchen because her time in California led to the understand that in colloquial usage, "bitchin'" meant "cool" or "hip", and she altered the spelling from Bitchin' to Bitchen because that served as a more useful or catchy complement to Kitchen. See Declaration of Martha Rapp executed February 8, 2011 ("Rapp Dec") ¶¶ 2-3. Rapp inaugurated the Bitchen Kitchen website in early 2004 (displaying products but requiring customers to call the store to make a purchase), and by September 9, 2004 she had purchased the domain name www.thebitchenkitchen.comand redesigned the website to allow direct online purchases, see Rapp Dec jj 20-23.

The Bitchen Kitchen business sells products bearing the Bitchen Kitchen mark, such as shopping bags, aprons, stickers, and coffee mugs; it also sells or has sold kitchenware endorsed by or affiliated with celebrity chefs-such as Emeril Lagasse pans, Rachael Ray food processors, and the Rachael Ray cooking magazine-as well as "As Seen on TV"-branded items such as the Magic Bullet countertop blender, see Rapp Dec ¶¶ 7-9. Emphasizing the broad reach of the Bitchen Kitchen business, Rapp notes that her brick-and-mortar store is visited by customers from across the country and around the world-estimated at 30,000 to 50,000 individuals in 2010-in part because of the desireable location of Pentwater on the shore of Lake Michigan and in part because of the pleasant, unique shopping experience, which is characterized by Rapp herself chatting with customers, yellow canaries singing, a varied inventory, and a sophisticated, knowledgeable staff, see Rapp Dec ¶¶ 10-14. The Bitchen Kitchen business has sold andshipped products to customers in all 50 States and in ninety-one foreign countries over the 14-month period from December 2009 through January 2011 inclusive, see Rapp Dec ¶¶ 48-49.

Rapp alleges that she "sought federal trademark protection" for the BK brand "shortly after opening The Bitchen Kitchen Business", but she did not actually apply for federal registration of The Bitchen Kitchen trademark until March 2006, Comp jj 22-23 and Rapp Dec ¶ 24. In August 2007, the United States Patent and Trademark Office ("PTO") issued registration number 3,285,907 to Rapp for The Bitchen Kitchen, and she continues to hold record title to that registered trademark ("the mark") and contends that it remains valid, Comp¶¶ 24-25 and Rapp Dec ¶ 25.1 Before registering the Bitchen Kitchen mark, the PTO's examining attorney searched the agency's records for confusingly-similar marks and stated that "no similar registered or pending mark has been found that would bar registration under Trademark Act Section 2(d), 15 U.S.C. § 1052(d).2 TMEP § 704.02." PI at 5 (quoting PTO Office Action datedSept. 2, 2006 at 1). MEI states, without contradiction from the defendants, that nobody filed a proceeding in opposition to its registration of the Bitchen Kitchen trademark, and to date, said trademark registration has not been challenged.3

Rapp licenses the BK mark exclusively to MEI, meaning that no other person or entity is entitled to use it, and they have used the mark consistently and without interruption since at least June 2002 in connection with the online and offline sale of kitchenware, kitchen linens, gourmet foods, and small kitchen appliances, Comp ¶¶ 27-29 and Rapp Dec ¶ 27. MEI submits photographs showing t-shirts, chef's hats, towels, aprons, coffee mugs, jam containers, barbecue sauce containers, and body-lotion containers bearing the Bitchen Kitchen mark, see PI Ex 3.

According to plaintiffs MEI and Rapp, the BK business's sales increased steadily from2002 into 2010, including a 400% increase in website sales from 2009 to 2010, Comp ¶¶ 12-13 and Rapp Dec ¶ 44. MEI emphasizes that the BK business prides itself on outstanding customer service and strict control of its brand and enjoys a favorable reputation among consumers, Comp ¶ 14. To promote itself, the BK business advertises extensively both online and offline, running commercials-the plaintiffs claim-on cable television stations such as the Food Network, the Fox News channel, and E! (Entertainment) TV; airing radio stations; posting ads in movie theaters; renting billboards; sending postcards to prospective customers, and advertising on social-media services such as Facebook (where it updates its inventory and announces special sales and events), Comp ¶¶ 15-18. MEI alleges that it has a commercial airing on the Food Network cable-television channel through at least April 2011, see PI Ex 4 (receipt for "cable buy").4 MEI stresses that its advertisements, Facebook page, and the electronic newsletter ("e-newsletter") which it disseminates to customers through the "Constant Contact" company, bear the unique logo it created which bears the BK trademark, which consumers have come to associate exclusively with MEI and Rapp, see Comp ¶¶ 16 & 19-20 & 48 and Rapp Dec¶ 18 and PI Ex P (Bitchen Kitchen fan page on Facebook website).

At an unspecified time in 2007, defendant B360 broadcast from Canada the first podcast of a cooking show entitled "Bitchin' Kitchen'", which was three minutes long and hosted by Nadia Giosia, who goes by the moniker "Nadia G"; boasts on the podcast that she "can cook up a storm in three-inch cherry stilettos"; routinely employs sexual innuendo, provocative attire, and off-color humor; offers recipes entitled "Save-your-sex-life Souffle" and "Save-your-sex-life Shepherd's Pie" and "deflate your mate Part One"; posts a biographical summary online which states that "[b]right red lips, wild hairstyles and sexy heels are the name of her game"; and has a Facebook page displaying photos of her wearing a negligee and high heels and carrying a whip, see Comp ¶¶ 30-31 and 34-36 and 39. Defendant B360 broadcasts and advertises the Bitchin' Kitchen podcast on the websites http: //www.bitchinlifestyle.tvand http: //www.bitchinkitchen.tv, and it also advertises the podcast and Nadia G on its Facebook page, see Comp ¶¶ 37-38 and Ex G. B360's website http: //www.bitchinlifestyle.tvpublishes articles with titles such as "Bitchin' Babes" and "Good Girls Going Bad", and it makes available a video entitled "I'm never drinking like that again" under the lead-in "Partied too hard last night? Hangover? Bitchin' Kitchen feels you. This song is all about those famous words: 'I'm Never Drinking Like That Again'", see Comp ¶¶ 40-41 and Ex H. B360's bitchinkitchen.tv website also has contained an article entitled"Good Girls Going Bad", with a thumbnail photograph of a naked woman which is strategically covered only by two black rectangular...

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