1 I61rhopm 1 2 3 UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF NEW YORK ------------------------------x HOP HOP PRODUCTIONS, INC. and FALEENA HOPKINS, 4 Plaintiffs, 5 v. 18 CV 4670 (AKH) 6 7 KEVIN KNEUPPER, TARA CRESCENT, and JENNIFER WATSON, Application for PI Defendants. 8 9 ------------------------------x New York, N.Y. June 1, 2018 11:30 a.m. 10 11 12 Before: HON. ALVIN K. HELLERSTEIN District Judge 13 14 15 APPEARANCES 16 17 18 19 20 CHRISTOPHER S. CARDILLO JONATHAN POLLACK Attorneys for Plaintiffs LEASON ELLIS LLP Attorneys for Defendant Kneupper BY: CAMERON S. REUBER LAUREN B. EMERSON 21 22 23 24 25 COWAN DEBAETS ABRAHAMS & SHEPHERD LLP Attorneys for Defendant Crescent BY: ELEANOR M. LACKMAN SCOTT J. SHOLDER HUNTON ANDREWS KURTH LLP Attorneys for Defendant Watson BY: JEREMY S. BOCZKO SOUTHERN DISTRICT REPORTERS, P.C. (212) 805-0300 2 I61rhopm 1 (Case called) 2 THE COURT: 3 MR. CARDILLO: I'll hear the jurisdictional issue first. Your Honor, for plaintiffs, we believe 4 we have jurisdiction based on two different issues. 5 this Court has subject matter jurisdiction over -THE COURT: 6 7 I don't think they challenged subject matter jurisdiction. MR. CARDILLO: 8 9 I'm not worried about that. First, The issue with personal jurisdiction, your Honor, as to Kneupper, Kneupper has filed a trademark 10 petition in the TTAB claiming that he has standing to file such 11 petition. 12 states -- and this is relevant and I'll get to it in a 13 second -- that he is a publisher of romance novels. 14 accurate, your Honor. 15 in an affidavit -THE COURT: 16 17 right? As far as we can tell, and he hasn't put He has been served both by email and by FedEx. THE COURT: 21 MR. CARDILLO: 23 That isn't Have you served him? 20 22 In his petition he We are talking about service of process, MR. CARDILLO: 18 19 We don't believe he does. But not personally? I wasn't directed to serve him personally with the order, your Honor. THE COURT: That is the purpose of the TRO but it is 24 not the purpose of the lawsuit. Anyway, I think under rule 65 25 I can go ahead even before a connection is formally filed. SOUTHERN DISTRICT REPORTERS, P.C. (212) 805-0300 3 I61rhopm MR. CARDILLO: 1 In terms of the service of the lawsuit, 2 your Honor, we don't have and we can't confirm the addresses of 3 the other two defendants. 4 court, your Honor. THE COURT: 5 6 filing. 7 mail. Rule 65 is conditional on notice and not Notice is sufficiently made by email and ordinary Who has not been served, Mr. Cardillo? MR. CARDILLO: 8 9 We wanted to address that today in We had served Ms. Watson at what we believe is her address in Texas, but we have not had 10 confirmation on that. 11 office, we determined that it is probably her address, but we 12 are not a hundred percent sure. 13 before she was represented to confirm. 14 us. 15 THE COURT: 16 MR. BOCZKO: 17 with Ms. Watson. Through a diligent investigation by my We requested from Ms. Watson She never responded to Her attorney is here, right? Your Honor, the address is not associated She has never lived there or worked there. 18 THE COURT: 19 MR. BOCZKO: How did you get notice to be here? Plaintiffs' counsel sent an email to the 20 general email address of her business, and it was forwarded on 21 to her. 22 THE COURT: 23 MR. BOCZKO: 24 THE COURT: 25 MR. BOCZKO: She got it that way? Correct. So she has notice. Correct. SOUTHERN DISTRICT REPORTERS, P.C. (212) 805-0300 4 I61rhopm THE COURT: 1 We can proceed. You will give the address 2 to Mr. Cardillo so he can make service proper if you don't want 3 to accept service. 4 MR. BOCZKO: Yes, your Honor. 5 MR. CARDILLO: For Ms. Crescent, your Honor, we have 6 been unable to ascertain that is her correct name. We don't 7 believe it is. 8 have been unable to obtain her address even though she is 9 represented by counsel. We think it is an alias or pen name. We also Prior to this case being filed, 10 counsel set a letter to Mr. Pollack, the trademark attorney 11 sitting to my left, stating that they represented her. 12 contacted that law office -- 13 THE COURT: 14 15 16 Is the petition for cancellation made by her? MR. CARDILLO: No. The petition is made by Mr. Kneupper, who is a California resident. 17 THE COURT: 18 MR. CARDILLO: 19 We What are you going to do about this? In terms of the service for Ms. Crescent? 20 THE COURT: Yes. 21 MR. CARDILLO: I would like the Court to order the 22 same way you ordered Ms. Watson's attorney to give us the 23 information. They are represented by counsel. 24 THE COURT: Who represents them? 25 MR. CARDILLO: Ms. Lackman and Mr. Sholder. SOUTHERN DISTRICT REPORTERS, P.C. (212) 805-0300 5 I61rhopm 1 MS. LACKMAN: Your Honor, we did have some discussions 2 regarding service, waiving service. 3 resident. 4 initial discussions. We are open to accepting service. 5 THE COURT: 6 MS. LACKMAN: 7 THE COURT: 8 9 10 Our client is a Canadian We had some But you have notice? Correct. Provide the address for service of process or accept service, one or the other. MS. LACKMAN: THE COURT: We will accept service. There you go. That is an issue. I think 11 we can go forward notwithstanding the arguments of lack of 12 service of process. 13 Cardillo. 14 Now I'll hear you on the case, Mr. MR. CARDILLO: Your Honor, we were forced to file this 15 order to show cause for three different reasons. 16 Ms. Crescent has published two books that are infringing on our 17 client's trademark that was duly filed with the USPTO. 18 color examples of that. 19 the black and white version in the document. 20 board puts the four different books, two by my client and two 21 by Ms. Crescent, all together so you can see it is an 22 infringement of my client's trademark. 23 The first is I have It is pretty difficult to tell from I also have a That is one reason. The second reason is that the trademark registration 24 is a part of the complaint, and Ms. Kneupper filed what we 25 believe is an erroneous petition to cancel those trademarks. SOUTHERN DISTRICT REPORTERS, P.C. (212) 805-0300 6 I61rhopm 1 THE COURT: I'm not going to stay proceedings before 2 the evidence. You go ahead. 3 whatever you want to do there. 4 go ahead. MR. CARDILLO: 6 THE COURT: 8 9 10 11 12 13 It is not my jurisdiction. You I'm not staying. 5 7 Whoever wants to, go and do Certainly, your Honor. How could you bring in the person who filed it? MR. CARDILLO: without standing. We believe because he filed a petition In other words, he claims in his petition -- THE COURT: That's a defense he makes there. It is not going to be a reason to bring in somebody else. MR. CARDILLO: Okay, your Honor. We will withdraw that as to Mr. Kneupper. 14 THE COURT: Mr. Kneupper is out of the case. 15 MR. CARDILLO: As to Ms. Watson, at the time there was 16 a secret -- and I don't use that in terms of my own wording but 17 in terms of what was put out by Ms. Watson -- there was a 18 secret movement called Cocktails which we believe also 19 infringed on our client's trademark. 20 publicist we have learned for Cocktails, has engaged other 21 people and has requested that they infringe. 22 THE COURT: 23 MR. CARDILLO: Ms. Watson, as a So she has used your trademark? Yes. Well, there is an issue of 24 whether or not she used our trademark once we were able to talk 25 to the attorneys. I don't want to misrepresent it. SOUTHERN DISTRICT REPORTERS, P.C. (212) 805-0300 In the 7 I61rhopm 1 sense that she is not the owner of Cocktails. 2 according to her attorney and declaration, only the publicist. 3 However, as the publicist, she has clearly requested or 4 promoted the idea of infringing on our trademark by telling 5 people to write books with a "Cocky" title in it. 6 THE COURT: 7 MR. CARDILLO: 8 THE COURT: 9 MR. CARDILLO: 10 MR. BOCZKO: 11 THE COURT: 12 MR. BOCZKO: She is now, After registration? After registration, your Honor. So she is in the case. She is in the case. May I respond? Yes. Ms. Watson has nothing to do with the 13 authorship, production, distribution. 14 anything of anyone, and there is no evidence in the record that 15 suggests she requested anyone to write for the book. THE COURT: 16 17 to infringe. 18 it. 19 20 21 22 She did not request As a publicist, she has responsibility not If this is a protectable mark, she infringed on MR. BOCZKO: She simply would respond and reach out to media who want to write about publication of the book. THE COURT: If she did anything like that, that is potentially a misuse of the trademark. 23 Proceed, Mr. Cardillo. 24 MR. CARDILLO: 25 order to show cause, your Honor. She stays in the case. That was the original impetus for the The complaint seeks a SOUTHERN DISTRICT REPORTERS, P.C. (212) 805-0300 8 I61rhopm 1 declaratory judgment. 2 declaratory judgment from this Court stating that the trade- 3 marks are valid and that our client has a right to them. 4 THE COURT: 5 MR. CARDILLO: 6 9 As a matter of what? We want a Summary judgment? As a matter of summary judgment, yes, your Honor. THE COURT: 7 8 Let me take a step back. It's too early. You're hear on a TRO or a PI. MR. CARDILLO: It is least on the PI, your Honor. We 10 would like to enjoin Ms. Crescent from continuing to publish 11 her books using our trademark. 12 13 THE COURT: Start with the basic steps. defendant. 14 MR. CARDILLO: 15 THE COURT: 16 MR. CARDILLO: 17 THE COURT: 18 MS. LACKMAN: 19 Yes. Either real or under a pseudonym. That's correct, your Honor. Mr. Reuber, who represents Tara? I do, your Honor, Ms. Lackman. I represent Ms. Crescent. 20 THE COURT: 21 real person or a pseudonym. 22 She is a I can make you reveal whether she is a MS. LACKMAN: You might as well just do it. It is a pseudonym. 23 pseudonym. 24 are at issue in the case. 25 to have anything to do with this. "Tara Crescent" is a She has written a lot of books. Two of her titles The others have never been alleged SOUTHERN DISTRICT REPORTERS, P.C. (212) 805-0300 9 I61rhopm 1 THE COURT: The real party in interest has to be sued. 2 MS. LACKMAN: 3 THE COURT: 4 MS. LACKMAN: Correct. So, do you want to give us the name? Our concern is as a matter of equity 5 that suing a party who is, in our view, not liable for 6 infringement, there has not yet been any showing that this will 7 encourage other plaintiffs to file suit in order to unmask 8 them. 9 THE COURT: Ms. Lackman, the first thing in discovery 10 will be to reveal her name. MS. LACKMAN: 11 You have no basis not to. Thank you, your Honor. We would be 12 amenable to deferring discovery to the extent this case 13 proceeds. THE COURT: 14 I can order discovery tomorrow. I can 15 order a deposition of your client tomorrow. 16 fencing with me? 17 it not to be used except for purposes of this case and under 18 seal. 19 20 21 22 Why are you If you don't want to publicize the name, give MS. LACKMAN: That would be what I would request, your Honor, that we do it under seal. THE COURT: Work that out with the plaintiff, and I will so order it. 23 MS. LACKMAN: Thank you, your Honor. 24 THE COURT: 25 the real party at interest. Assume now, Mr. Cardillo, that you have SOUTHERN DISTRICT REPORTERS, P.C. (212) 805-0300 10 I61rhopm 1 MR. CARDILLO: 2 THE COURT: 3 MR. CARDILLO: Thank you, your Honor. Proceed. Your Honor, in terms of Ms. Crescent, 4 if I may, I don't know if the Court likes to use these types of 5 exhibits or displays, but I have set up an exhibit that clearly 6 shows, and I can hand this up to the Court, that clearly shows 7 the four book covers. 8 and "Cocky" Firefighters. 9 client has 19 books in this series already. 10 THE COURT: 11 MR. CARDILLO: 12 in color. 13 color. 14 THE COURT: photographs. 16 which is which. 18 19 20 21 22 23 24 25 Cocky Doctors The others are two by my client. My Have the defendants seen these pictures? They are part of the complaint but not I have one that I can hand to the defendants in 15 17 Two are by Ms. Crescent: Mark it as Exhibit 1 and hand it up. Why don't we call them 1, 2, 3, and 4. MR. CARDILLO: Four Tell us Your Honor, number 1 would be Cocky Roomie, a book authored by Ms. Hopkins. Number 2 would be Cocky Firefighters, a book authored by Ms. Crescent. Number 3 would be Cocky Doctors, a book authored by Ms. Crescent. And number 4, would be Cocky Mothers Day, a book authored by Ms. Hopkins. Cocky Roomie was the first in the series. SOUTHERN DISTRICT REPORTERS, P.C. (212) 805-0300 Cocky 11 I61rhopm 1 Mothers Day was in the last in the series so far of the 19 2 books. 3 THE COURT: 4 MR. CARDILLO: 5 Are these all by the defendant? Two are by my client. The reason I lumped them together is because as you can see -- 6 THE COURT: Which two? 7 MR. CARDILLO: Faleena Hopkins? Faleena Hopkins is the Roomie and the 8 Mothers Day, the first and last in the series, Exhibit 1 and 9 number 19. THE COURT: 10 11 Exhibit 4 is the alleged infringing. MR. CARDILLO: 12 13 14 Exhibit 1 is the alleged infringing and books. Exhibits 1 and 4 are the plaintiffs' Numbers 2 and 3 are the alleged infringing books. THE COURT: The way we marked it, Cocky Roomie is 15 Plaintiff's Exhibit 1, Cocky Mothers Day is Plaintiff's 16 Exhibit 4. 17 MR. CARDILLO: Right. Those are my client's books. 18 The other two books are the books written by Ms. Crescent. 19 you can tell, the font, the placing -- 20 THE COURT: 21 MR. CARDILLO: As 2 and 3 are the defendant's books. Yes. As you can tell, the font, the 22 placement of the word, the size of the word, the way it is laid 23 out on the book cover is almost identical, if not identical, to 24 what Ms. Hopkins does with her books. 25 THE COURT: Let's look at the trademarks. SOUTHERN DISTRICT REPORTERS, P.C. (212) 805-0300 They are 12 I61rhopm 1 Exhibit E to your declaration. 2 "Cocky" as standard characters without claim to any particular 3 font, style, size, or color. 4 MR. CARDILLO: What is claimed is the word Your Honor, that is correct. But there 5 are two trademarks. 6 If you look at Exhibit G, it is the second trademark, which is 7 stylized trademark of COCKY. 8 THE COURT: 9 MR. POLLACK: 10 My client actually owns three trademarks. Which came first? Your Honor, they were both filed at the same time. 11 THE COURT: No, I want you to answer that. 12 MR. CARDILLO: They were both filed at the same time, 13 your Honor. 14 understanding, was used a little bit later in the series in 15 terms of the style, the way it was written. 16 the "Cocky" cover has been the same from the beginning. 17 other words, there has always been the word "Cocky" above the 18 other word in the center, large bold type, etc. 19 20 The COCKY trademark, the stylized one, to my THE COURT: But the format of In You have also registered the word "Cocky" as a series of downloadable ebooks in the field of romance. 21 MR. CARDILLO: That's correct. 22 THE COURT: 23 MR. CARDILLO: 24 classes, class 9 and class 16. 25 downloadable ebooks in the field of romance. That's F. To be clear, on Exhibit F there are two Class 9 is the series of Class 16 is a SOUTHERN DISTRICT REPORTERS, P.C. (212) 805-0300 13 I61rhopm 1 series of books in the field of romance. 2 both of those classes, your Honor, both of the trademarks, both 3 the stylized and the word. THE COURT: 4 5 We have registered in Exhibit G is the literal elements in a script design. MR. CARDILLO: 6 That is correct, your Honor. That is 7 what you see on the covers of the two books that I have handed 8 up. THE COURT: 9 How can you trademark the word "Cocky"? MR. CARDILLO: 10 Your Honor, there are a few ways. The 11 first thing is that in a series, the case law is very clear on 12 this, you can trademark words like "Cocky" without an issue. 13 Second is when you say the word "Cocky," you don't necessarily 14 think of anything that is relatable to the book except the book 15 itself. 16 identifier in terms of what you think about. 17 600,000 books sold so far. 18 versed in her books and book covers and this trademark, even 19 before she filed it. So it identifies the book. THE COURT: 20 It is definitely a source Ms. Hopkins has So this is a community that is well Do defendants argue that there is any 21 relationship between the title "Cocky" and the contents of the 22 book? 23 MR. CARDILLO: I don't believe they do, your Honor. 24 But that would be erroneous. "Cocky" is a term used for this 25 book as a source identifier for the series. That's the key. SOUTHERN DISTRICT REPORTERS, P.C. (212) 805-0300 14 I61rhopm 1 The key is that this is a series. 2 as a series in the same way that "Star Wars" was protected. THE COURT: 3 If you can protect one, you can protect 4 the series. 5 a series doesn't help you. If you can't protect one, the fact that it may be 6 MR. CARDILLO: 7 THE COURT: 8 MR. CARDILLO: 9 We are looking to protect it Your Honor, I'm not sure if I agree. Repetitive use. I'm not sure if I agree with that. provides a pointing to the source. It If I want to buy another 10 book in that series and I see the word "Cocky," I understand 11 that now I'm buying a book in that series. 12 was buying a book in the Twilight series, which is copyrighted. THE COURT: 13 The same way if I In other words, you want to be able to 14 prove that there is a secondary meaning here because of the use 15 of the series? 16 MR. CARDILLO: 17 think I could do that. 18 secondary use. 19 doesn't, and I don't think "Cocky" is -- at the least it is 20 suggestive. 21 romance novel. 22 fighter, someone who has done very well in school. 24 25 But I don't think this requires I think the case law clearly shows that it When you think of "Cocky," you don't think of a You might think of a bar fighter, a prize THE COURT: 23 If the Court wanted me to do that, I You think it is suggestive of male prowess? MR. CARDILLO: I think it is suggestive of if you walk SOUTHERN DISTRICT REPORTERS, P.C. (212) 805-0300 15 I61rhopm 1 through a few steps, you would get to a romance novel. 2 what we are protecting here, the use of the word "Cocky" on the 3 cover of a romance novel. THE COURT: 4 You said it is not descriptive of anything 5 or suggestive of anything. 6 suggestive of male prowess in a romantic situation. MR. CARDILLO: 7 8 It seems to me it is at least I would say at the least we are in the suggestive category, which is worthy of trademark protection. THE COURT: 9 10 That is All these books have to do with the prowess of males? MR. CARDILLO: 11 Yes. But, more important, all these 12 books have to do with the Cocker family. 13 were about the original six brothers. 14 were about their children. So we follow the Cocker family. 15 They are known as "Cocky." That's why "Cocky" is used in the 16 titles. 17 the series. 18 19 20 21 22 23 24 25 The first six books The next set of books Also, the defense argues that Cocker is the name of That is not the name of the series. THE COURT: That doesn't prove anything. Anything else you want me to say on the validity of the trademark? MR. CARDILLO: Not at this point, your Honor. I just want to respond to whatever the defense says. THE COURT: Let's turn it over to the defense on the validity of the trademark. MR. REUBER: Cameron Reuber on behalf of all three defendants. SOUTHERN DISTRICT REPORTERS, P.C. (212) 805-0300 16 I61rhopm MR. CARDILLO: 1 2 second? 3 in the case. Mr. Reuber represents Mr. Kneupper, who is no longer 4 THE COURT: 5 MS. LACKMAN: 6 He is out of the case. representing in court. 7 THE COURT: 8 MS. LACKMAN: 9 Your Honor, may I interrupt for one I don't know if he should be I'm happy to do it if it's a problem. Ms. Lackman. A couple of points. One is with respect to the protectability of the mark and how strong it is. The 10 fact is we have this in the record. This is a commonly used 11 term. This is not something out 12 of thin air. 13 The term "Cocky" has been used in connection with a series well 14 prior to the time Ms. Hopkins used it. They are by romance writers. This is not Harry Potter or something like that. 15 THE COURT: It started out with Cocker Brothers. 16 MS. LACKMAN: Exactly. If you look at the books that 17 were marked, you can see certain indicators of source here. I 18 see "Cocker Brothers" being used consistently, independently. 19 I also see Ms. Hopkins name. 20 an indicator of source, nor should it be. 21 books. 22 written by my client, who clearly labels her books with her 23 name on top. 24 books and who actually started using the terminology for books 25 prior to Ms. Hopkins. The term "Cocky" is not used as It describes the It describes the contents of the books, as do the books Everyone knows that they are not Ms. Hopkins' SOUTHERN DISTRICT REPORTERS, P.C. (212) 805-0300 17 I61rhopm 1 The question of the validity here, I think it is 2 something that will be heavily fought, perhaps with a petition 3 to cancel. 4 of thing that can be used to censor other authors, especially 5 those who have come before. 6 THE COURT: 7 8 9 But in terms of the strength, this is not the type It is clearly being used as a source, isn't it, indicating a source for a series of books? MS. LACKMAN: indicator of source. As this shows, this does not show an If I look at this, I would not say COCKY 10 a trademark. 11 series of books. 12 The title of the book is not Mothers Day by Cocky or Mothers 13 Day originated by Cocky. 14 Cocky Roomie. 15 be two books in the series Cocker Brothers, which was 16 consistently used, and we don't challenge that. 17 I would say "Cocky" is part of the title of this In fact, the titles change in every term. The title is Cocky Mothers Day or The source is Faleena Hopkins, and it appears to So out of anything on these covers that shows an 18 indicator of source for Ms. Hopkins, it is her name, it is the 19 term Cocker Brothers, perhaps the series. 20 is her name and there are a series of titles. 21 entitled to be used -- 22 23 THE COURT: For Ms. Crescent, it Trademarks are You are arguing, looking at Exhibits 1 and 4, Cocky Roomie is an adjective. 24 MS. LACKMAN: 25 THE COURT: Correct. And Cocky Mothers Day is what? SOUTHERN DISTRICT REPORTERS, P.C. (212) 805-0300 18 I61rhopm 1 MS. LACKMAN: 2 contents of the book. 3 of the book. Cocky Mothers Day, "Cocky" describes the It is an adjective that is descriptive 4 THE COURT: I don't see that. 5 Exhibit 4, Cocky Mothers Day. 6 "Cocky" and "Mothers Day." Let's talk about There is no connection between 7 MS. LACKMAN: There may very well be. I haven't read 8 the book, your Honor. 9 here that based on the image that is shown, based on the genre, But there is an impression or suggestion 10 Cocky Mothers Day refers to some event on Mothers Day or 11 relating to Mothers Day or mothers themselves that might 12 involve some male prowess. When one comes to the store or goes on Amazon and says 13 14 I'd like to buy a romance novel, they look for I want to buy a 15 book by Faleena Hopkins, I want to buy a book in the Cocker 16 series. 17 the book. 18 19 When they see Cocky Mothers Day, that is the title of Cocky Roomie is title of the book. THE COURT: Cocky Mothers Day is clearly not an adjective. 20 MS. LACKMAN: 21 THE COURT: 22 MS. LACKMAN: It is an adjective of the book. If it is, it is a nonsensical. It describes the contents of the book. 23 This is not to an average person what would identify the source 24 any more than "Mothers Day." 25 adjective, is not an indicator of source either. "Mothers Day" is not an SOUTHERN DISTRICT REPORTERS, P.C. (212) 805-0300 Book titles 19 I61rhopm 1 are inherently as a matter of law not protectable unless you 2 can show -- 3 THE COURT: Would you excuse me for five minutes. 4 (Recess) 5 THE COURT: 6 MS. LACKMAN: Please continue, Ms. Lackman. To wrap up the point of your Honor's 7 question, the titles have something to do with the content of 8 the book, and that is what matters here. 9 10 THE COURT: What is the relationship? MS. LACKMAN: Exhibit 1 is about a cocky roomie, and 11 Exhibit 4 has something to do with there is a Mothers Day plot 12 or something along those lines, and it involves the assertion 13 of male prowess. 14 THE COURT: I can see in number 1 it shows a male 15 stripped to his waste, a tattoo on his arm, defined biceps, 16 defined abdominal muscles, with a certain look of haughtiness. 17 It seems to me that the title here, Cocky Roomie, is a 18 description of the type of roommate this person is or this 19 person has. 20 As to Exhibit 4, Cocky Mothers Day, the depiction is 21 of a young man in an open collar sport shirt, various items of 22 what appear to be a watch and cosmetic jewelry on his wrist, in 23 a pose that also shows a certain haughtiness. 24 do with Cocky Mothers Day is anybody's guess. 25 What this has to So the "Cocky" I think relates to the picture and is SOUTHERN DISTRICT REPORTERS, P.C. (212) 805-0300 20 I61rhopm 1 descriptive of the picture, but it may not have any meaning in 2 relationship to Mothers Day. MR. CARDILLO: 3 It may or may not, your Honor. I 4 assume that the reader would want to buy the book and find out. 5 The real question here is, is this a valid indicator of source. That also depends on a couple of other points, one of 6 7 which is she wasn't the prior user of this series of marks. 8 All of these books or a significant majority of the books that 9 are described that Ms. Hopkins wrote were not sold under or 10 used the term "Cocky." Many people have used this term before. 11 In fact, my client's books predate Ms. Hopkins' first use of 12 the term. 13 My client is not claiming rights in the term "Cocky" 14 because, as shown in Exhibits 2 and 3, it is not a trademark. 15 It is designed to entice the potential buyer into buying the 16 book and reading the stories, and it sends a message as to what 17 the stories may be about, that they may involve some assertion 18 of male prowess or otherwise. 19 couple of problems. 20 THE COURT: So this is not we've got a This is not a question of branding. You present in your papers about a dozen 21 instances of prior use of "Cocky" in a title: Bite Me Cocky; A 22 Little Bit Cocky; The Cocky Cowboy; Cocky Balls Boa, described 23 as an erotic parody; Cocky Cowboys; Cocky SWATS; Cocky: A 24 Stepbrother Romance; Cocky: A Cowboy Stepbrother Romance; and 25 so on. SOUTHERN DISTRICT REPORTERS, P.C. (212) 805-0300 21 I61rhopm 1 MR. REUBER: 2 THE COURT: 3 MR. REUBER: Your Honor, if I may? No. You are out of the case. I understand, your Honor. But I penned 4 the brief, and there is an error that my client alerted me to 5 this morning in the brief. 6 just read, Bite Me Cocky, published in 2012. 7 that that title may have changed as a result of the Cockygate 8 sort of disputes. 9 Bite Me and not Bite Me Cocky. I just wanted to point that out. 11 12 13 MR. REUBER: 15 MR. REUBER: 18 19 Yes, your Honor. That was our understanding. THE COURT: 17 Originally Bite Me, then it became Bite Me Cocky? 14 16 He has learned It might have been originally published as THE COURT: 10 Specifically, it is first one you What is the explanation for the change? As a protest, effectively. That is our best guess. THE COURT: In response to the protest, he added the word "Cocky"? MR. REUBER: In response to Cockygate registrations, 20 yes, we believe the author added the word "Cocky" as a protest. 21 That is pure supposition on our part, your Honor. 22 been doing this for about 48 hours. 23 24 25 MR. CARDILLO: We have only Your Honor, since this started, the Cockygate whole thing -THE COURT: I know about that, but it is really SOUTHERN DISTRICT REPORTERS, P.C. (212) 805-0300 22 I61rhopm 1 irrelevant. MR. CARDILLO: 2 The use of "Cocky" and the infringement 3 on my client's trademarks if the Court finds them to be 4 valid -- 5 THE COURT: Let's stick to the point. 6 MS. LACKMAN: Your Honor, we are not aware that 7 anything else on this list is incorrect. 8 see, these dates well predate the claimed date of first use 9 which we also submit is actually fraudulent. 10 As your Honor will But that is a separate question. 11 THE COURT: What is the nature of these books? 12 MR. CARDILLO: The nature of my client's books, your 13 Honor, follows the family called the Cocker family through 14 their multiple generations and their love lives and family 15 life. 16 THE COURT: They are five brothers? 17 MR. CARDILLO: 18 brothers, the first six books. 19 individual brother. 20 It is all part of one series, but the next set of books is 21 about the first six brothers, their children. The original series is about six Each one is dedicated to an The next series is about their children. 22 THE COURT: Cocky Roomie? 23 MR. CARDILLO: 24 THE COURT: 25 MR. CARDILLO: It's one of the brothers. Cocky Mothers Day? Cocky Mothers Day, I believe, is my SOUTHERN DISTRICT REPORTERS, P.C. (212) 805-0300 23 I61rhopm 1 client puts out holiday books about the characters. Cocky 2 Mothers Day, Cocky Christmas, things like that. 3 you're right, your Honor, in your assessment that there is no 4 way to assume that "Cocky" would mean what it would typically 5 mean in that title. Again, I think By the way, to address Ms. Lackman's point about prior 6 7 titles, I would point out that none of them are series. My 8 client's is a series, which according to trademark law is very 9 different than a one-off. None of the one-offs she speaks 10 about has applied secondary meaning to give them trademark 11 rights, and none of those individuals are here to contest what 12 we are trying to do. MS. LACKMAN: 13 Your Honor, it is not correct that there 14 was no series. Putting aside the minimal relevance of that, it 15 is not correct that there was no series prior to what Ms. 16 Hopkins claimed is her series. 17 series that came out well before Ms. Hopkins. 18 THE COURT: 19 MS. LACKMAN: 20 21 believe. There was a Cocky Cage Fighter What came out before? The Cocky Cage Fighter series, I It came out in 2015. MR. CARDILLO: Your Honor, we wouldn't dispute that 22 you can use the word "Cocky" in the Cocky Cage Fighter as an 23 adjective. 24 THE COURT: Case Fighter? 25 MR. CARDILLO: Cage Fighter, where you are fighting in SOUTHERN DISTRICT REPORTERS, P.C. (212) 805-0300 24 I61rhopm 1 a cage, a metal cage. 2 use that. 3 application is very specific to the way we use "Cocky." 5 That is not what our application is for. THE COURT: 4 We wouldn't dispute that somebody can Our It is one of the three applications has to do with the series, the other two don't. MR. CARDILLO: 6 Yes. Well, they all have to do with 7 whether or not we hold the trademark legitimately based on the 8 series. THE COURT: 9 10 Why is that? You don't mention series except in -MR. CARDILLO: 11 In the reply we have, your Honor, I go 12 into it in detail. 13 them to you right now. 14 brief. 15 "Silhouette Romance" has been afforded trademark. 16 "Class" in terms of a magazine has been afforded a trademark. 18 I believe the cites are in my reply "Cherished Romance" has been afforded trademark, THE COURT: 17 There are numerous examples, and I can give The word There may be a different standard in the patent law office than there is in court. MR. CARDILLO: 19 Okay. In any case, your Honor, Cocky 20 Cage Fighter, we have no objection to that. 21 that sense as an adjective in a long sentence and it is not 22 used the way Ms. Crescent uses it, as a way to confuse the 23 public and to direct readers to her series instead of our 24 series. 25 MS. LACKMAN: You can use it in Your Honor -- SOUTHERN DISTRICT REPORTERS, P.C. (212) 805-0300 25 I61rhopm 1 THE COURT: 2 MR. CARDILLO: 3 "Cocky" Roomie and what you said before -- Honor? 4 THE COURT: 5 MR. CARDILLO: 6 7 8 9 Are you addressing that to me, your Yes. I'm not quite sure what you want me to address. THE COURT: You said one of them was descriptive. You admitted that one of them was descriptive. MR. CARDILLO: No, your Honor, I have never admitted 10 any of them are descriptive. 11 Ms. Lackman is citing, Cocky Cage Fighter, which has nothing to 12 do with my client, that is a descriptive use of the word 13 "Cocky" in a title. 14 THE COURT: 15 16 I am saying that the book that No less and no more than a Cocky Firefighter -- I'm sorry -- Cocky Roomie. I'm looking back at your trademark registrations. 17 There is nothing about a series in Exhibit G and there is 18 nothing about a series in Exhibit F. 19 20 21 MR. CARDILLO: I believe the trademark applications include numerous book covers that shows that there is a series. THE COURT: I'm looking at what it says. "The mark 22 consists of the literal elements in a script design." 23 Exhibit G. 24 25 That's Exhibit F says -- MR. CARDILLO: If you look at the class that it's in, your Honor, both class 9 and 16, on the registrations, it SOUTHERN DISTRICT REPORTERS, P.C. (212) 805-0300 26 I61rhopm 1 actually says class 9 a series of downloadable, class 16 a 2 series of books. 3 It is actually given as a series. THE COURT: Exhibit E says, "The mark consists of 4 standard characters without claim to any particular font, 5 style, size, or color." 6 MR. CARDILLO: That is correct, your Honor. That 7 describes the actual mark. 8 applied for, they are both a series of books, whether they are 9 ebooks or the traditional printed book. 10 But in terms of what the class we So we did apply for a series, and that's what we are trying to protect. 11 THE COURT: I want to move on to another point. 12 MS. LACKMAN: 13 THE COURT: Your Honor, if I may? No. I'm looking at the Polaroid factors, 14 of which there are eight, which measure likelihood of 15 confusion. 16 the strength of the plaintiffs' mark. 17 stage in the litigation that it is a weak mark at best. 18 That is the ultimate issue in this. The first is It seems to me at this The next factor is the similarity of plaintiffs' and 19 defendant's marks. In looking at Exhibits 2 and 3, Ms. 20 Lackman, what is the trademark? 21 MS. LACKMAN: My client's trademarks, if there are 22 any, on her books are her name, and that is pretty much it. 23 What I'm hearing from Mr. Cardillo is that he says there is no 24 issue with the series of books called Cocky Cage Fighters, but 25 my client can't put out a book called her Cocky Firefighters. SOUTHERN DISTRICT REPORTERS, P.C. (212) 805-0300 27 I61rhopm 1 These are titles. THE COURT: 2 3 These are not trademarks. What is in the content of her Cocky Firefighters? MS. LACKMAN: 4 It appears to be a male-female-male 5 romance. 6 male characters is a firefighter. THE COURT: 7 8 Beyond that, I imagine it involves one or two of the In other words, it's descriptive of the contents? MS. LACKMAN: 9 10 THE COURT: 11 MS. LACKMAN: 12 Absolutely. Cocky Doctors? Same thing, yes. Same with all the other books that we put before your Honor. THE COURT: 13 Two male figures. One seems to be wearing 14 a stethoscope, indicating he is a doctor, but he is stripped to 15 the waist. 16 MS. LACKMAN: 17 THE COURT: Doesn't look like my doctor, your Honor. Another one also has a stethoscope, and he 18 is also stripped to the waist, maybe below the waist, with a 19 heavily tattooed arm. 20 of doctor who is not necessarily a doctor but somebody 21 suggestive of male prowess. 22 MS. LACKMAN: 23 THE COURT: 24 25 These are descriptive of a certain kind Correct, your Honor. Do you want to tell me something, Mr. Boczko? MR. BOCZKO: Yes, please, your Honor. I wanted to SOUTHERN DISTRICT REPORTERS, P.C. (212) 805-0300 28 I61rhopm 1 point out that Ms. Watson's book that she is associated with 2 presents an entirely different issue. 3 the mark, I hope we have an opportunity to discuss that. 4 work is entirely different. 5 Authors Group. 6 THE COURT: 7 MR. BOCZKO: 8 On the similarities of Her It was created by the Romantic Who is that? This is the Cocky Collective. Ms. Watson is an unpaid publicist doing this as a courtesy. 9 THE COURT: 10 MR. BOCZKO: Who do you represent again? I represent Ms. Watson, Jennifer Watson. 11 As I mentioned to the Court previously, Ms. Watson is a 12 publicist. 13 very large group of the romance novel community who were very 14 upset that the plaintiffs thought that they could monopolize 15 the word "cocky" or "arrogant" or "haughty" in book titles. 16 as a form of protest and to critique plaintiffs' attempt to 17 monopolize that mark, they came out with an anthology called 18 The Cocky Collective. 19 cover of the title, but it features a rooster. She was asked by a group of authors who represent a 20 THE COURT: 21 MR. BOCZKO: 22 So Plaintiffs have sort of cut off the Where is that? Your Honor, we have a copy of the book. But I have printouts if you as well. THE COURT: 23 I never saw your papers because they were 24 online. I didn't see them online. You were supposed to 25 deliver a courtesy copy and none came. SOUTHERN DISTRICT REPORTERS, P.C. (212) 805-0300 29 I61rhopm MR. BOCZKO: 1 Correct, your Honor. It was my under- 2 standing that there was an issue with delivery to the Court. 3 But we do have copies for the Court if we can present them to 4 your Honor. 5 THE COURT: 6 MR. CARDILLO: 7 Please. Your Honor, while he does that, may I -- 8 THE COURT: Let me see the exhibit. 9 MR. CARDILLO: I wanted to speak to what Ms. Lackman 10 said and the two book covers. 11 THE COURT: 12 MR. BOCZKO: Let's finish with this. Also, your Honor, the book is called 13 Cocktails: the Cocky Anthology, and it features a rooster or a 14 cock on the cover. 15 intended as a form of protest and parody of their attempt to 16 monopolize that. Here are the papers for your Honor. 17 THE COURT: 18 MR. BOCZKO: That's quite all right. 19 THE COURT: I'll consider the title. 20 color picture of the title? 21 MR. BOCZKO: I am not going to keep the book. Yes, your Honor. Do you have a On the pages that I 22 printed out, that should be on your Honor's desk there. 23 Amazon, it features the full title and cover. 24 25 THE COURT: It was From What you are telling me is that if COCKY is a valid trademark, then this is a deliberate infringement. SOUTHERN DISTRICT REPORTERS, P.C. (212) 805-0300 30 I61rhopm 1 MR. BOCZKO: 2 THE COURT: 3 This is a deliberate parody, your Honor. Just a minute. Cocky Collection will be marked as Exhibit A. MR. BOCZKO: 4 This is a deliberate parody, your Honor, 5 an attempt to protest. 6 by one of the authors. 7 THE COURT: 8 MR. BOCZKO: 9 In fact, the foreword points that out What other things have you given me? That was simply a color printout so you have the title. THE COURT: 10 11 The cover Cocktail is The But it was in connection with a lot of other things: customer reviews -MR. BOCZKO: 12 13 Honor. 14 would like to point out Ms. Watson was approached by this group 15 of authors. 16 Plaintiffs' counsel is trying to point out that they are paying 17 for my client's fees. 18 my client that they are paying for her legal fees. 19 provided me with a retainer. 20 21 I'm sorry. It's just a complete printout, your I have only been 48 hours on this case. I All the proceeds are being donated, I believe. That is inaccurate. No one has notified She has Like I said, this group of authors and the writing itself was outrage by the plaintiff's -- 22 THE COURT: I heard you. 23 MR. BOCZKO: Thank you, your Honor. 24 THE COURT: Do you want to respond? 25 MR. CARDILLO: I want to respond to Ms. Lackman, and SOUTHERN DISTRICT REPORTERS, P.C. (212) 805-0300 31 I61rhopm 1 then I will respond to the other opposing counsel. 2 it is important to know that Ms. Crescent had worked with my 3 client prior to publishing these two books. 4 that she wasn't aware of my client's use of the word "Cocky" in 5 her titles the way it is used, even prior to the application 6 for a trademark, is absolute nonsense. THE COURT: 7 8 For her to say The second factor in the Polaroid factors is a similarity of plaintiffs' and defendant's marks. MR. CARDILLO: 9 10 Your Honor, They are identical. I'm sorry, your Honor. 11 THE COURT: 12 The third factor is the competitive proximity of their 13 products. They are similar. They are proximate and they are competitive. Fourth is the likelihood that plaintiff will bridge 14 15 the gap and offer a product like defendant's. 16 making these books with these titles and defendant is 17 publishing the same, whether it is protest or as an original 18 offer. 19 20 21 It is another factor in favor of plaintiff. Fifth is the actual confusion between products. Mr. Cardillo, you have one example of actual confusion. MR. CARDILLO: I have three examples. 22 exhibit to my complaint, your Honor. 23 correspondence. 24 other type of correspondence with my client. 25 Plaintiff is It is the last It is three emails or I don't know if they are text messages or some THE COURT: Where is it? SOUTHERN DISTRICT REPORTERS, P.C. (212) 805-0300 32 I61rhopm 1 MR. CARDILLO: It is the last exhibit, your Honor, 2 Exhibit P. There are three different pages. 3 represents a different communication to the author Ms. Hopkins, 4 telling her how these consumers were confused, bought the wrong 5 book, and were misled by the titles. 6 THE COURT: 7 MR. CARDILLO: Each one What is the source of this? These are consumers, your Honor. 8 are pictures of actual communications between them and my 9 client, who is the author. 10 THE COURT: How do I know that? 11 MR. CARDILLO: There is no address. I believe they are pictures from her 12 phone of the communications. 13 that they are legitimate. 14 These I can certainly aver to the fact On the first page, the third line reads, "I assume the 15 book was part of the series and didn't look further that the 16 authors were different." 17 The second page, "I'm so sorry I shared the link for 18 Cocky Chef. 19 hard work. 20 You're right, the reason I read it was due to your So sorry." The third page. "Hi, Faleena. I just figured out how 21 to return the book because the book wasn't her book, it was 22 somebody else using her trademark." 23 24 25 Your Honor, there is ample confusion in the community of the romance purchaser, but in general. THE COURT: How do you answer that, Mr. Boczko. SOUTHERN DISTRICT REPORTERS, P.C. (212) 805-0300 33 I61rhopm MR. BOCZKO: 1 None of these instances of confusion 2 actually relate to Ms. Watson's books. 3 Cocktails. She is associated with I'm not sure what book they are being confused by. 4 THE COURT: Ms. Watson is the publicist. 5 MR. BOCZKO: 6 THE COURT: 7 MS. LACKMAN: For Cocktails. Let me hear Ms. Lackman. Admittedly Cocky Chef is not my client's 8 book. None of these instances relate to my client's books. 9 And it is not even clear what these people were confused about, 10 three instances. 11 thousands of books. 12 THE COURT: 13 We are talking about purportedly tens of If it relates to someone else has published a book with the title "Cocky" in it? 14 MS. LACKMAN: 15 THE COURT: 16 refers to defendant's books? Mr. Cardillo, how do we know that this MR. CARDILLO: 17 That party is not here. Your Honor, I can't represent to the 18 Court that we can make that connection with these three. 19 reason why Exhibit P is important is that other authors, as we 20 investigate this, are doing the same thing that Ms. Crescent is 21 doing: using the font, using the way it's placed, using the 22 size. 23 THE COURT: 24 MR. CARDILLO: 25 The But they are not in the case. They are not in the case, your Honor, that's correct. SOUTHERN DISTRICT REPORTERS, P.C. (212) 805-0300 34 I61rhopm THE COURT: 1 I can't credit this as indicating actual 2 confusion. The other instance that is mentioned is a reference 3 on a web page or a criticism. 4 who placed it. 5 I can't find that there are instances of actual confusion. It's unreliable. No one knows who sent it, nor the purpose. Defendant's good faith. 6 No one knows So It seems to me, and I speak 7 to Ms. Lackman and Mr. Boczko, that there is a lack of good 8 faith. 9 The issue really is whether they had a right to do that. The titles and the layout have a lot of similarity. MS. LACKMAN: 10 Your Honor, I respectfully disagree. 11 The layouts are consistent with all sorts of romance novels. 12 don't know how my client could have acted in bad faith if she 13 used the term before Ms. Hopkins did. 14 faith -- 15 THE COURT: 16 MS. LACKMAN: If anyone acted in bad Where is this example of prior use? Our book came out in August 2017, and 17 the first time Hopkins used her mark as a series -- she used 18 Cocker Brothers consistently. 19 THE COURT: 20 MS. LACKMAN: 21 THE COURT: 22 23 24 25 I We are not interested in Cocker Brothers. Right. What is the first instance of plaintiffs' use of the word "Cocky"? MS. LACKMAN: November 18, 2017 is the first time she used the term "Cocky" and claimed that it was a trademark. THE COURT: Is that right, Mr. Cardillo? SOUTHERN DISTRICT REPORTERS, P.C. (212) 805-0300 35 I61rhopm 1 MR. CARDILLO: That is incorrect, your Honor. The 2 trademark came after her use, but the use of "Cocky" as you see 3 it in those papers that I preserved you with color photographs 4 of the books dates back to 2016, your Honor. 5 papers the exact date. 6 7 THE COURT: I don't have it here. It is in my June of '16. That is the reference in the registration, right, Mr. Cardillo? 8 MR. CARDILLO: 9 MS. LACKMAN: That is correct, your Honor. Basically, all the people who came 10 before Ms. Hopkins, if my client thought it was okay to use 11 this term because all these other writers had been using this 12 term consistently since well before Ms. Hopkins claimed first 13 date of use in 2016 -- 14 THE COURT: All of this evidence of publicity and 15 marshaling of other writers in the genre to use "Cocky" on 16 their books is indicating lack of good faith. 17 MS. LACKMAN: My client is separate. My client is 18 just an author. 19 fact, she had a conversation with Ms. Hopkins and she said no, 20 it's okay if you use "Cocky." In fact, Mr. Cardillo said it's 21 okay if I use "Cocky" as long as you don't use Cocky 22 Firefighters. 23 this is all confusing. 24 25 She is not agitating anybody or anything. You can use Cocky Cage Fighters. THE COURT: In This is where Exhibits 2 and 3, which are evidence of your client's use, Exhibit 2 the title is her Cocky SOUTHERN DISTRICT REPORTERS, P.C. (212) 805-0300 36 I61rhopm 1 Firefighters, "Cocky" in yellow and the other words in white. 2 It is subtitled "An MFM Menage Romance," showing two males and 3 a female. 4 5 Exhibit 3, the title is Her Cocky Doctors, also "An MFM Menage Romance." There too we see two males and a female. 6 MS. LACKMAN: Correct. 7 is prominently shown. 8 term "Cocker Brothers." 9 you run to the Trademark Office and you secure a trademark on a The others show a single male and the What we have here is not the fact that 10 dubious or nondubious basis. 11 THE COURT: 12 Your Honor, my client's name The most prominent aspect of these titles, as you point out, Ms. Hopkins, is the name of the author. 13 MS. LACKMAN: 14 THE COURT: 15 MR. CARDILLO: That's correct. Tara Crescent. Let me hear Mr. Cardillo. Your Honor, in terms of bad faith, Ms. 16 Crescent knew about these books, knew what they looked like, 17 was helping promote them for Ms. Hopkins, never had a title 18 that looked like this before. 19 Hopkins, all of a sudden created a Cocky series which she 20 promotes the series the same way my client does. 21 the Cocky Series. Once she saw the success of Ms. She calls it She takes the script, font, and look of -- 22 THE COURT: Where is that? 23 MR. CARDILLO: I'd like to see that. The Cocky Series is -- I might have it 24 in my papers, your Honor. 25 the complaint. But there is proof in my papers, in SOUTHERN DISTRICT REPORTERS, P.C. (212) 805-0300 37 I61rhopm 1 THE COURT: Point me to it. 2 MR. CARDILLO: 3 with Ms. Hopkins in promoting -- 4 THE COURT: 5 MR. CARDILLO: Exhibit M shows that she had worked Exhibit M to the complaint? To the complaint, your Honor. She had 6 worked with Ms. Hopkins to promote the Cocky Series books. 7 after that, after that exhibit, she then, understanding that 8 this is -- 9 THE COURT: Just a moment. 10 MR. CARDILLO: 11 THE COURT: 12 MR. CARDILLO: And I want to see the exhibit. Sure. What is Exhibit M? Exhibit M is correspondence dated March 13 9, 2017, predating Ms. Crescent's two books that she published, 14 indicating that her and Ms. Hopkins were discussing cross- 15 pollinating their books with their followers. 16 Ms. Hopkins would promote Ms. Crescent's books and Ms. Crescent 17 would promote Ms. Hopkins' books. 18 In other words, So, for her to say she wasn't aware of the Cocky 19 Series and way that they were presented -- I want to add, your 20 Honor, that she knew about this at least three months or four 21 months ahead of publishing these two books and specifically 22 used the same look of the book, the trademark, specifically 23 used the trademark, in order to entice readers who would have 24 thought that these were Hopkins books. 25 can't define in it a better way. That's bad faith. SOUTHERN DISTRICT REPORTERS, P.C. (212) 805-0300 You 38 I61rhopm 1 MS. LACKMAN: Your Honor, there is a lot that I need 2 to comment on there. It is completely wrong. 3 there is a book with a single title, which again is not 4 protectable under trademark law. 5 THE COURT: 6 MS. LACKMAN: Which book? 7 Brothers Atlanta." 8 "Cocky Series" at all. 9 10 THE COURT: "Cocky Series." 12 don't know when. It shows "Cocky Senators Daughter That is the link. It doesn't say the This is not part of the Cocky Series? MS. LACKMAN: 11 Exhibit M shows Right before she started using the term She started using the term "Cocky Series" I Well after this, late 2017. 13 THE COURT: Mr. Cardillo? 14 MR. CARDILLO: Your Honor, as the application for 15 trademark, as my client's affidavit states, she was using 16 "Cocky" in the title in this manner since 2016. 17 18 19 THE COURT: That doesn't prove that the defendant had notice of it. MR. CARDILLO: Your Honor, this is is correspondence. 20 In my client's affidavit, I believe, and I have to double-check 21 this, but I know she references this and she talks about her 22 and Ms. Crescent discussing the books and cross-pollinating 23 each other's list. 24 it if she is telling her readers buy this book from Ms. Hopkins 25 and putting it on her page. It would be impossible for her not to know It would be just impossible. SOUTHERN DISTRICT REPORTERS, P.C. (212) 805-0300 39 I61rhopm MS. LACKMAN: 1 She wouldn't know if someone used a 2 single title -- Mr. Cardillo cannot state that the term "Cocky 3 Series" was used, because it wasn't, and there would be no 4 reason because it is so -THE COURT: 5 6 It seems to me your client knew that there had been use of "Cocky" by the plaintiff. MS. LACKMAN: 7 There has been the use of that term in a 8 descriptive sense in a title, a single title of a book and in a 9 series, by dozens of writers. 10 THE COURT: I am going to find that the issue of 11 defendant's good faith cannot be resolved on the preliminary 12 injunction. Seventh is the quality of defendant's product as 13 14 compared to plaintiff's. 15 they? MR. CARDILLO: 16 They are pretty much the same, aren't Your Honor, I would say that my client 17 has 600,000 books sold as of today's date or approximately 18 600,000. 19 THE COURT: 20 Do you have anything to say, Ms. Lackman? 21 MS. LACKMAN: 22 23 24 25 That doesn't prove quality. Yes. I think this is a neutral factor. My client has sold 300,000 copies of her books. THE COURT: I can't resolve that issue on preliminary injunction. Eight is the sophistication of the purchasers. SOUTHERN DISTRICT REPORTERS, P.C. (212) 805-0300 It 40 I61rhopm 1 seems to me the readers here are very well acquainted with 2 these kinds of romance books and are very careful about who 3 wrote them. 4 purchasers here. I suggest to you that we have sophisticated MR. CARDILLO: 5 Your Honor, may I take a step back with 6 likelihood of confusion? 7 to prove confusion. 8 liked. In a series of books you don't have You just have to show that there will be a 9 THE COURT: 10 just likelihood of confusion. 11 confusion, that is extraordinary proof. 12 have. 13 You never have to prove actual confusion, If you can prove actual I don't think you All these eight factors have to do with the judge's 14 finding of likelihood of confusion. I am going through them 15 one by one. 16 eight factors, the sophistication of the purchasers, that we 17 have sophisticated purchasers. 18 MR. CARDILLO: I'm making a point with regard to the last of the Your Honor, if we can't use Exhibit P 19 to show that there was actual confusion with Ms. Crescent's 20 books, I would point out to the Court that Exhibit P at least 21 shows that even though the readers are intelligent, there is 22 confusion within the marketplace based on the way that these 23 books are -- 24 25 THE COURT: I'm not able to find that. find anything on that factor as well. So I can't It seems to me that the SOUTHERN DISTRICT REPORTERS, P.C. (212) 805-0300 41 I61rhopm 1 readers here are very specific to the genre of books which I 2 would call cheap romance novels and so know what is going on 3 and are not fooled, particularly the way the titles are used. 4 To sum up, the most important factor here as we have 5 gone through the eight is the strength of the plaintiffs' mark. 6 It seems to me at this point of the record and given the way 7 that these titles look to be more adjectives than indications 8 of source, that we have a weak mark. 9 defendants use the word "Cocky" in a way that makes it an It is not clear that 10 indication of source. It is more a description of the nature 11 of the contents: Her Cocky Firefighters, Her Cocky Doctors. I hold that defendant is not using the word "Cocky" in 12 13 a mark. 14 other factors being equal, that there is some kind of an 15 infringement, at this point I don't think a similarity. 16 17 18 Although there could be a likelihood of confusion, Third is the competitive proximity of their products. They are clearly competitive proximate. The fourth is a likelihood that plaintiff will bridge 19 the gap and offer a product like defendants. That is not 20 really a factor because both are in the market already. 21 Fifth is actual confusion. 22 Defendant's good faith, I think it is a mixed factor. 23 Seven, the quality of the defendants' product as 24 25 I didn't find any. compared to plaintiff's, they seem to be equal. Sophistication, at least at this point on the record, SOUTHERN DISTRICT REPORTERS, P.C. (212) 805-0300 42 I61rhopm 1 the sophistication of the purchasers, I think sophistication is 2 high, and that is another factor against issuing a TRO or a 3 preliminary injunction. 4 Now let's talk about irreparable harm. Plaintiff will 5 suffer irreparable harm if, assuming the trademark is valid, 6 others will occupy the field. 7 obtained and damages can be proved, it is also a damage to good 8 will involved in the trademark that can't be proved. 9 clearly is irreparable harm that would be suffered by the 10 11 Although sales data can be So there plaintiff in the absence of restraint. However, it seems to me that defendant, who is on the 12 market with her romance novels, if restrained, would also 13 suffer damage and it would be irreparable. 14 off the market, it can't be sold. 15 do with timeliness as well. 16 balance here. 17 favor because a good portion of injury by the plaintiff would 18 be compensable in damages and captured profits. 19 is in favor of defendant. 20 If a book is taken Books of this nature have to So I can't say that there is any If there is, it is likely to tip in defendants' So that factor Whether an injunction is in the public interest, given 21 the way these trademarks are used, I don't think there is much 22 of a public interest in them. 23 Here plaintiff can't demonstrate that its trademark 24 merits protection, nor in my opinion that defendant's use of a 25 similar mark is likely to cause consumer confusion. SOUTHERN DISTRICT REPORTERS, P.C. (212) 805-0300 Those are 43 I61rhopm 1 the eight factors that we just talked about. 2 motion for a TRO and for a preliminary injunction is denied. That doesn't mean the case is over. 3 4 go into the next stage of discovery. 5 prepared for that, Mr. Cardillo. 6 MR. CARDILLO: Accordingly, the It means that we I don't know if you were I am, your Honor. Over the weekend, if 7 Ms. Lackman is available, I will coordinate with her, either 8 that or on Monday in terms of service of the complaint and with 9 Ms. Crescent's -- 10 THE COURT: I think they are going to accept service. 11 MR. CARDILLO: Both sides? Okay. We will serve the 12 complaint on the two law firms, and then we can move forward 13 with a discovery schedule. MR. BOCZKO: 14 15 Your Honor, just an opportunity to confer with my client whether to accept service or not. 16 THE COURT: What schedule do you have in mind? 17 MR. CARDILLO: I haven't thought about it yet, your 18 Honor. 19 Without the preliminary injunction, I understand the Court's 20 reasoning, my client's reputation if books are being put out by 21 more than one author -- 22 23 But I would like to proceed as fast as possible. THE COURT: I think you are entitled to accelerated discovery. 24 MR. CARDILLO: 25 THE COURT: Thank you, your Honor. Would three months be adequate? SOUTHERN DISTRICT REPORTERS, P.C. (212) 805-0300 44 I61rhopm 1 MS. LACKMAN: Your Honor, if we accept service under 2 the rule, we are entitled to 90 days to respond, and we do 3 intend to move to dismiss. 4 THE COURT: I can shorten the time. 5 MS. LACKMAN: Even so, we would like permission to 6 move to dismiss for lack of personal jurisdiction as well as 7 other grounds, including under the Rogers v. Grimaldi test. 8 THE COURT: You can make any motion you want, but that 9 is not going to slow discovery. 10 MS. LACKMAN: 11 THE COURT: 12 MR. CARDILLO: 13 THE COURT: 14 MS. LACKMAN: 15 16 17 discovery? Thank you, your Honor. How about three months? That's fine with me, your Honor. To complete all discovery. This is for fact discovery? Or expert We believe that expert may be needed. THE COURT: I think fact discovery. Then I'll have a status conference and we'll discuss it. 18 MS. LACKMAN: 19 fact discovery in three months. 20 Ms. Lackman? THE COURT: If we are still in the case, we can do Okay. I'll give you a date. September 7, 21 11 o'clock. I was planning not to have a conference on the 22 record, but I'd rather have an informal discussion. 23 the case, unless there is objection, we'll do it at 10 o'clock. 24 MR. CARDILLO: 25 THE COURT: That being What was the date, your Honor? September 7th. SOUTHERN DISTRICT REPORTERS, P.C. (212) 805-0300 45 I61rhopm 1 MR. CARDILLO: 2 THE COURT: At 10 o'clock? Yes. I am going to change it to September 3 7th. We'll have September 7th as the date for completion of 4 all fact discovery. 5 September 14th at 10 o'clock. The status conference will be held 6 MR. CARDILLO: 7 MR. BOCZKO: 8 MS. LACKMAN: 9 10 question. Thank you, your Honor. shorter than under rule 4. THE COURT: 12 MS. LACKMAN: probably. How much time do you really need? To make a motion to dismiss, 30 days I have a case going to trial pretty soon. 14 THE COURT: 15 MS. LACKMAN: 16 Your Honor, I have one scheduling You indicated that the time to respond will be 11 13 Thank you, your Honor. You are not going to answer? We intend to move to dismiss, your Honor. 17 MR. BOCZKO: 18 THE COURT: We do as well, your Honor. Motion to dismiss will be due 20 days from 19 today, three weeks from today. 20 filed, send along with it a schedule of dates for opposing the 21 motion and for reply. 22 opposition. 23 accelerated scheduling. 24 one week. 25 June 22. When the motion is The reply should be a week after the I suggest two weeks time for opposition given the Three weeks, then two weeks, and then Anything else? SOUTHERN DISTRICT REPORTERS, P.C. (212) 805-0300 46 I61rhopm 1 MR. CARDILLO: 2 THE COURT: 3 MS. LACKMAN: 4 THE COURT: That's it, your Honor. Thank you. Defendants, anything else? No, your Honor. Thank you all. Thank you. I'm returning the four 5 exhibits to the plaintiff to retain. 6 exhibits. 7 with instructions to make a copy of the photograph -- of the 8 cover, and that will be Exhibit A. 9 gave up I'm returning unmarked. 10 Counsel keep the And the book cover I'm giving back to Mr. Boczko The other papers that you Thank you all. (Adjourned) 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 SOUTHERN DISTRICT REPORTERS, P.C. (212) 805-0300