Treemo, Inc. v. Flipboard, Inc.
| Decision Date | 15 October 2014 |
| Docket Number | No. C13–1218–JPD.,C13–1218–JPD. |
| Citation | 53 F.Supp.3d 1342 |
| Court | U.S. District Court — Western District of Washington |
| Parties | TREEMO, INC., a Washington corporation, Plaintiff, v. FLIPBOARD, INC., a California corporation, Defendant. Flipboard, Inc., a California corporation, Counter–Claimant, v. Treemo, Inc., a Washington corporation, Counterclaim–Defendant. |
Philip P. Mann, Mann Law Group, John E. Whitaker, Whitaker Law Group, Seattle, WA, for Plaintiff/Counterclaim–Defendant.
David H. Kramer, Jacob T. Veltman, John L. Slafsky, Sara E. Rowe, Wilson Sonsini Goodrich & Rosati, Palo Alto, CA, Barry M. Kaplan, Wilson Sonsini Goodrich & Rosati, Seattle, WA, for Defendant/Counter–Claimant.
This matter was tried to the Court, sitting without a jury, on September 22, 23 and 29, 2014. Plaintiff and counterclaim- defendant Treemo, Inc. (hereinafter referred to as “Treemo” or “defendant”) is seeking a declaration that its “FLOWBOARD” mark and “F” logo (collectively, the “FLOWBOARD marks”) do not infringe the “FLIPBOARD” mark and “F” logo (collectively, the “FLIPBOARD marks”) owned by defendant and counter-claimant Flipboard, Inc. (hereinafter referred to as “Flipboard” or “plaintiff”) under the Declaratory Judgments Act, 28 U.S.C. §§ 2201 and 2202, and the Lanham Act, 15 U.S.C. § 1125(a) and (c).1 Dkt. 1. Flipboard alleges statutory and common law infringement of trademark rights and false designation of origin and unfair competition under 15 U.S.C. §§ 1114 and 1125(a). Flipboard asks the Court to permanently enjoin Treemo and/or its agents from using the FLOWBOARD marks, and to order the United States Patent and Trademark Office (“USPTO”) to invalidate any trademarks registered to Treemo. Dkt. 6. The Court has now considered the evidence presented at trial, the exhibits admitted into evidence, the parties' briefs, and the arguments of counsel. This memorandum opinion will constitute the Court's Findings of Fact and Conclusions of Law.
Both parties have consented to proceed before the undersigned under 28 U.S.C. § 636(c), Fed.R.Civ.P. 73, and Local MJR 13. Dkt. 16. The Court has original jurisdiction under 15 U.S.C. § 1121 () and 28 U.S.C. § 1331, 1332, and 1338. Venue is proper in this district pursuant to 28 U.S.C. § 1391(b)(1) because a substantial portion of the events giving rise to this action occurred within this district.
Founded in 2010 by Michael McCue and Evan Doll, Flipboard is a technology company based in Palo Alto, California. Dkt. 84 at 2 (). Marci McCue, Flipboard's head of marketing and one of its founding members, testified that Flipboard currently has approximately 160 employees. Flipboard launched its eponymous product in July 2010, which is a software application (“app”) for smartphones and tablet computers (hereinafter the “Flipboard app”) available in the United States as well as in a variety of foreign countries. The Flipboard app is available for free and can be downloaded to most mobile devices within one minute from online channels such as Apple's App Store for iPhones and iPads or Google's Play Store for Android devices. Id. The Flipboard app is also available for use on Blackberry devices, Windows phones and tablets, Amazon's Kindle, and Barnes and Noble's NOOK device. Id.
The original version of the Flipboard app, or “Flipboard 1.0,” provided a means for collecting content that others had posted to the Internet, such as the news of the day. As a result, the Flipboard app gained a reputation as a news aggregator or a news reader. The Flipboard app was immediately successful, as it was named Apple's iPad App of the Year in 2010 and one of Time's Top 50 Inventions of 2010. Since 2010, Flipboard has also won awards around design, innovation on the Android, and several Webby awards.
The FLIPBOARD mark was selected in order to describe the motion of the product and reflect the unique way users experience the app, as they “flip” between pages using touchscreen gestures. Flipboard's “F” logo is described in its trademark registration “a red square containing a stylized letter ‘F’, which is composed of a white vertical rectangle, with a pink bar creating the upper bar of the letter ‘F’, and with a pink square below it, creating the middle bar of the letter ‘F’.” Ex. 523. Thus, Flipboard's “F” logo has a stairstep design, and the pink horizontal bars give the logo the appearance of translucency. Flipboard's head of design testified that the “F” logo was selected to distinguish the logo from many other startups' rounded or “bubble art-ish” logos. The FLIPBOARD marks have been used in commerce since July 20, 2010, and appear throughout the Flipboard app as well as in the URL of Flipboard's website, the account name for Flipboard's official Facebook account, the “handle” for Flipboard's official Twitter account, and Flipboard's marketing material.
Flipboard applied to register its FLIPBOARD mark with the USPTO in February of 2010, and its “F” logo mark in December of 2010. The USPTO granted registration of the FLIPBOARD mark, separately, on July 24, 2012 as to certain goods and services in International Classes 9, 41, and 45, and on August 27, 2013, as to certain services in International Class 35. See Exs. 72, 73, 75, 76. Flipboard has also applied for and received registration for the FLIPBOARD marks in International classes 35 and 42. See Exs. 74, 77. The USPTO granted registration for the “F” logo mark as to certain goods and services in International Classes 9, 41, and 45, on July 31, 2012, and in International Class 35 on August 20, 2013. See Exs. 75–76.
On March 26, 2013, Flipboard released an updated iteration of its app, referred to during the trial as “Flipboard 2.0.” Flipboard 2.0 substantially expanded the functionality of the product by allowing users to create personal and interactive publications called “magazines.” Users create these magazines by combining online content from various Internet sources in order to tell stories, create an online photo album, or display social media content.See Ex. 115 (); Ex. 100 (). Users can then publish and share their magazines with others across social networks, or via e-mail and website posts.
The launch of Flipboard 2.0 in March 2013 was the first big release since Flipboard's original launch. Flipboard conducted a large public relations campaign to advertise the app's new features, including press tours, e-mail campaigns, and overhauling the website. The consistent theme in those marketing efforts was to explain how Flipboard 2.0 was expanding the user's capability to collect and create their own content. Flipboard continues to devote substantial time and resources to marketing the Flipboard 2.0 app and building brand awareness through social network channels such as Facebook and Twitter, Flipboard's website, weekly blog posts, news articles and online publications. Flipboard spends approximately $3–4 million annually to market its app.
Ms. McCue testified that thousands of user-created magazines are shared by Flipboard users every day.2 For example, universities have created magazines that function like a brochure, displaying news about happenings on campus, videos, and photographs. See Ex. 111 (“Rice University Official Flipboard”). Business associations have created industry presentations or publications to help people who are in a common business stay “current” or connected on a particular topic. See Ex. 112 (“Mobile Trucking Magazine: Trucking Industry News & Information for Drivers”). The Flipboard app can be used to create a portfolio to organize and display a user's work product that has been posted elsewhere on the internet. See Ex. 113 (journalist's writing portfolio); Ex. 114 ().
One limitation of Flipboard 2.0 is that the content added to each magazine must have already been uploaded to another online service. Specifically, Flipboard 2.0's current editor tools allow a user to adjust layouts, change the cover of the magazine, and add some written comments, but a user cannot upload original content directly off a phone or tablet right into the Flipboard app. Instead, it must first be posted on the web elsewhere, such as a Facebook account. However, Ms. McCue and Flipboard's General Counsel Cecily Mak testified that Flipboard will be releasing a new iteration of its app (“Flipboard 3.0”) with a more expansive tool set in the next 60 to 90 days that will allow users to add original content right into the Flipboard app, as opposed to posting it somewhere else on the Internet first.
Founded in October 2005 by Chief Executive Officer Brent Brookler, Treemo is a small technology company based in Seattle, Washington.3 Since its founding, Treemo has been in the business of developing and marketing mobile applications. Between 2009 and 2011, Treemo was primarily producing and distributing a “family” of software products for mobile devices with names like “Appazine,” “Appavideo,” and “Appafolio.” Mr. Brookler testified that he first heard about the Flipboard app shortly after its initial launch in July 2010, and was therefore familiar with Flipboard several years before he launched the Flowboard app.
The Appafolio product, which was the primary product that Treemo was promoting in 2011, was a platform for a user to bring together into a “folio” the user's personally-generated multimedia content, such as graphics, imagines, or other user-created content. Mr. Brookler testified that while developing Appafolio, which required an interaction between the Internet and a tablet device, his development team realized they were actually building presentation software...
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