#Cockygate, Take Two: This Time It’s Judicial (UPDATED #2)
As usual: I am an attorney, but nothing herein should be viewed as legal advice. I am writing on the basis of both known facts and allegations, and if those allegations are changed or proven incorrect my analysis would likely change as well. You should consult an attorney licensed in your jurisdiction and familiar with the relevant law before making legal decisions.
Faleena Hopkins, the protagonist (or antagonist, depending on your POV) of the “Cockygate” saga, which I addressed in this post, has taken her grievances to the Federal District Court for the Southern District of New York. (That’s the Federal District Court that covers New York City and its environs.) She has sued:
- Kevin Kneupper, the attorney who filed a Petition to Cancel her trademark registration for “COCKY”.
- Tara Crescent, an author who has published romance novels incorporating the word “Cocky” in their titles.
- Jennifer Watson, a publicist participating in the promotion of an anthology called “Cocktales” specifically set up to raise funds to help people who have incurred legal expenses related to the “COCKY” mark and similar sorts of marks. NOTE: Multiple persons have alleged that Ms. Watson was not involved in the creation and publication of the anthology, as I originally stated. Assuming they are correct, I regret the error.
The plaintiff has asked for a lot of things in her complaint. She wants the court to declare that her mark is valid. She wants a declaratory judgment that her mark isn’t infringing any mark of the defendants, or any other right of theirs, and an injunction to stop all the defendants from, essentially, harassing her about her mark and her use of it. She wants the people who are selling allegedly infringing books to stop it and to pay damages to her for doing it. As far as Kneupper, who hasn’t published any allegedly infringing books, she wants the court to order the USPTO to dismiss his Petition to Cancel her registration, with prejudice. (That means he can’t re-file it later, as opposed to a dismissal without prejudice, which means he could correct it and try again.) And, finally, she wants attorney’s fees from everybody.
The only thing she can get from Kneupper, since he hasn’t infringed her marks, is the order to dismiss his petition, the related injunction(s,) and attorney’s fees. Taking the easy one of those first, assuming the court doesn’t find his petition was filed in bad faith, it is extremely unlikely that she can get an award of attorney’s fees from him. In the US we typically do not have a “loser pays” system, and Kneupper like every other citizen (or anybody, really) is fully entitled to seek cancellation of a trademark registration if he has a good-faith reason to do so.
Please note that the renowned trademark law scholar Anne Gilson LaLonde wrote a blog post (see it here) about Mr. Kneupper’s petition. She is not optimistic about its success in its current form, but we won’t know anything about that for several months, assuming the District Court (“SDNY”) doesn’t order it dismissed. The SDNY does have the authority to do that, and to suspend the petition in the Trademark Trial and Appeals Board (“TTAB”) pending the outcome of the litigation. It’s much more common for this to happen when there is related litigation between the registrant and the petitioner about who owns the mark because they both have a claim to it, but the SDNY does have the absolute authority to overrule pretty much anything the TTAB does because Article III courts, yada yada, way outside our scope of discussion. So theoretically, yes, she could get this part.
Now moving on to Crescent, we get into a much more traditional trademark infringement case. In addition to an injunction against continued infringement (i.e., she wants the court to order Crescent to stop selling the allegedly infringing books) she wants attorney’s fees and damages to be proven later. Such damages could include part of the revenues from the sale of infringing books or lost profits from the reduced sales of her own books. Again, all pretty standard in cases of this type.
By the way, I’m not going to talk about the counts in the complaint that address New York’s Unfair Competition law, because I’m not licensed in NY, but I will say that almost every trademark infringement case cites the unfair competition law of the state where it is filed if the attorneys can figure out a way to do it. It’s not a scam or a trick or anything, it’s just how these suits work. But it will, usually, stand or fall with the Federal trademark questions, so it’s not that important for purposes of this discussion.
Crescent published books with “Cocky” in the titles, including books which identify themselves as part of “The Cocky Series (NSFW),” in late 2017, after Hopkins’ alleged first use in commerce of the “COCKY” mark to identify a series of romance novels (which was in June of 2016: Registration Info Here.) Assuming that’s all true, that’s a pretty good place to start alleging trademark infringement.
Now, there is a presumption that trademarks, once registered with the PTO, are valid. So there are two different burdens of proof here:
- Hopkins has to prove that Crescent infringed her mark(s,) and that the infringement caused her legally recognizable damages.
- Crescent, if she wishes to contest that the mark belongs to Hopkins and is enforceable against her, must prove either that her use was not infringing, or that the mark is invalid and can’t be enforced by Hopkins at all.
Let me be clear here: Hopkins has a valid Federal trademark registration. That is a serious legal advantage. But she still has to prove her case, and Crescent can still raise multiple defenses. Without seeing Crescent’s responses, I am not going to get into this further, other than to say Crescent needs to take this seriously but should not be unduly pessimistic about her chances in my opinion.
Regarding Watson, the discussion is much the same. Watson’s argument that there is no likelihood of confusion will be stronger for various reasons. First and foremost, she has made it clear that the allegedly infringing work with which she is associated is in direct response to Hopkins’ registration of the “COCKY” mark and later actions. She has also made somewhat different uses of the mark, which makes any allegation of likelihood of confusion much more difficult in my opinion. But, again, until I see Watson’s responses, I am not going to get too far into this save to say that she has the same burden of proof as Crescent and Hopkins has the same burden of proof against her.
Addressing the filings generally… I try not to disparage other attorneys without good reason. But the kindest thing one can say about them is that they may have been prepared under time pressure (likely to try to stop the Cocktales anthology from selling many copies, and suspend Kneupper’s petition in the TTAB as quickly as possible.) There are, indisputably, a lot of typos and some very nontraditional structuring of allegations and claims. Mr. Kneupper has linked the documents to his Twitter account in this thread if you’d like to see them: https://twitter.com/kneupperwriter/status/1000463708168966144
Now, all this can be fixed, and a good litigator can usually run a litigation without subject matter expertise… if they have access to consulting counsel with knowledge of the subject matter. I did some very perfunctory research about Hopkins’ attorney and he does not appear to have participated in a lot of intellectual property litigation. (Interestingly, Hopkins’ trademark registrations were originally filed by an entertainment and intellectual property law firm based in Los Angeles: her suit was filed by a New York City lawyer who appears to specialize in tort/injury litigation.) I have no information on whether Hopkins’ counsel has such resources, but his firm seems to be small and specialized so it would have to come from some other source. So, to be charitable, this is not the most auspicious beginning one could imagine for a lawsuit of this kind.
The first hearings on Hopkins’ suit are next week, and relate to whether the SDNY should immediately issue various injunctions against the defendants – that is, whether the risk of harm is so great that the Court should start issuing more or less permanent orders before the case is tried on the merits. This sort of thing is almost always denied, and I see no reason why it shouldn’t be denied here. The only thing that really needed to be taken care of RIGHT NOW is suspending Kneupper’s petition in the TTAB so that nothing happens there until the SDNY decides whether to deal with the question of the registration’s validity itself or let the TTAB do it. That part’s already done. (It’s just suspended at this point: it’s possible it will be un-suspended later.)
We will know more after we see the responses filed by the defendants and the judge’s commentary on the case. Until then I think the best course of action for everybody but the defendants is to sit tight and not get too worked up just yet.
The defendants have made their first filings, including an appearance by the attorney for Kevin Kneupper and a letter from counsel for Tara Crescent regarding the hearing set for Friday June 1. Plaintiffs have also filed additional documents including a response to the aforementioned letter and an affidavit in support from Faleena Hopkins herself.
This… this is going to be ugly.
A few comments:
- Hopkins’ attorney is coming out of the gate swinging. He has accused some of the defendants of trying to duck service. Given that the lawsuit was filed less than a week ago, this is an extremely confrontational thing to do. Maybe it’s just because I’m not from New York, but I’ll be honest: I winced a few times reading some of the things he said. It’s way too soon, in my non-litigator opinion, to be that belligerent in front of a Federal District Court judge.
- Furthermore, again in my non-litigator opinion, his letter and his pleadings wrote a few checks that those affidavits can’t cash. He can fix that later, of course, but it’s better to underpromise and overdeliver and not the other way around.
- The unusually high number of typos in the initial filings seems to be part of a pattern on the part of Hopkins’ attorney. If he’s rushing that much, he’s rushing too much. However, I’m beginning to believe that the fact that he’s rushing is not the problem here.
- It also seems more likely than ever that Hopkins’ attorney is not an experienced trademark litigator and does not have an experienced trademark litigator guiding him, as he did not file a proposed notice to the PTO on the required form for the Court to review. This is not a problem for his case – the court advised him to do it and he did. But an experienced trademark litigator would have included it with the initial filing or shortly thereafter, especially since they were asking the Court to order the TTAB proceedings suspended pending the outcome of the litigation.
- The letter from counsel for Crescent seemed quite reasonable and professional and had sort of an air of “Look, judge, naturally whatever you say goes, but we don’t see what the MAJOR EMERGENCY is here. How about we all just take a deep breath and do this in order and by the book?” They made some good points about the fact it’s sort of strange Hopkins knew the alleged infringement was going on for quite some time and did little or nothing about it and then suddenly IT’S A CRISIS. Not dispositive in any way, but seizing the “we’re the reasonable ones” position early in the litigation can have serious strategic consequences if it goes on for a long time.
- The fact that the judge dissolved the initial Preliminary Injunction and removed the bond requirement for the defendants “sua sponte,” or “of his own accord,” after reading the Petition to Cancel, and said “there are serious issues of fact and law that have to be decided before a preliminary injunction can be granted” in his Order doing so is significant, but not earth-shattering. “There are serious issues of fact and law that have to be decided” is judge-speak for “this thing is not as straightforward as the plaintiff wants it to sound.” The fact that he said that before the defendants even filed a response is an indication that this is not going to be over in a blink. Usually it’s the other party asserting that that is the case. Here the judge is just straight up saying it.
- Ms. Hopkins is really going to regret some of her posts and that video, in my opinion, because they are going to be used to impeach her affidavit. There is a direct conflict between what she asserted then and what she is asserting now. Before anybody goes yelling about perjury, just hold on. It’s nowhere near that level yet and probably never will be. But it’s going to come up and it’s going to make her look silly.
The defendants have filed jointly to oppose Hopkins’ request for a preliminary injunction and temporary restraining order. Thank you to the gracious Courtney Milan for providing the Memorandum of Law.
I should note first that the defendants allege that Watson, the publicist, was even less involved in the “Cocktales” anthology than was first apparent – although the anthology was a cooperative effort, she alleges she did not participate at all in its creation and was retained only for purposes of ordinary commercial promotion of the work. Suing her for trademark infringement was a terrible mistake in my opinion and I doubt she’ll be a party to the suit for long. I had the vague impression she was more involved than that somehow, so mea culpa, but on the other hand I did not file a Federal lawsuit against her based on my “vague impression.” So apologies to Ms. Watson for my misunderstanding, but I think I can forgive myself given the relative levels of diligence required.
Meanwhile, Ms. Crescent, the author they claimed was ducking service, alleges they confused her name with that of a street in Canada so service was not properly made (But at least they got to allege she was ducking it!) This is… this is ludicrous. Sue “Does 1-10” if you must, that’s fine, but you would have to actively try to make yourself look worse to the judge than this is heading for. (Again, assuming the defendant’s allegations are true. There are three sides to every story.)
Defendants’ counsel makes the very sound argument, in my opinion, that this is not about who owns the trademark, which is usually the case when requests similar to those of plaintiff’s are made of the court, but whether there is a trademark. There is a registration, but that does not mean there is a trademark. (See my prior post.)
Oh, and oops, there’s that video and those non-lawyer C&D letters coming back to bite her…
Plaintiffs have admitted that her use of “cocky” in titles would not likely cause confusion as to
source or affiliation; moreover, she has publicly stated that she has not suffered lost sales.
In my opinion, the memorandum of law filed by the defendants’ attorneys is extremely well written, extremely persuasive, and does an extremely good job of seizing that “we’re the reasonable ones” high ground I mentioned previously. It’s even formatted better (and I only noticed three typos, all quite minor.)
Let me be clear: Who has the better lawyer should not determine the outcome of a case. Who has the better case should determine the outcome of a case. But judges (and juries) are only human, as are we all, and presentation matters. Given that in my opinion the Plaintiff has a shaky case when viewed in the most charitable light, her lawyer’s red-faced pounding on the table, compared to the calm, composed and extensively well-researched response of the defendants, is not helping that case.
As always, questions are welcome in the comments. Thank you for reading!