TWiT’s Trademark Lawsuit Against Twitter Sent Back to the Drawing Board
The popular and long-running show “This Week in Tech,” commonly called TWiT, sued Twitter. TWiT provides audio and video content branded under the TWiT trademark. It alleges that Twitter’s offering of video services and content under the TWITTER brand infringes on TWiT’s trademark rights.
Twitter argued that its mark had become incontestable so it could not infringe, but the court does not reach this argument. Instead, the court says that TWiT “does not sufficiently identify Twitter’s allegedly infringing conduct.” It dismisses the claim for trademark infringement with leave to amend.
The court also rejects TWiT’s contract claims based on Twitter’s assurances made to TWiT’s founder on a TWiT episode and several years later via email.
Evan Williams, one of Twitter’s founders, appeared on TWiT’s “net@night” in March 2007. TWiT argued that the parties entered into an oral coexistence agreement during this program. According to TWiT, Ev agreed to not distribute video or audio content, and TWiT agreed it would not offer microblogging services. The audio of the program is in the record. The court having listened to it says the requisite contract elements are absent.
A couple of years later, Leo LaPorte (TWiT’s founder) sent a demand letter to Twitter to express concern about Twitter’s possible encroachment into TWiT’s space. Ev responded via email telling LaPorte to not “worry .. [Twitter is not] expanding to audio or video under the Twitter brand.” TWiT argued this formed the basis of a written agreement. The court is also unpersuaded by this, saying that “don’t worry” is not a specific statement that constitutes a promise.
TWiT also raised a promissory estoppel claim, but this fails for similar reasons: there’s no definite promise on Twitter’s part to not enter into the audio or video market.
Finally, the court also rejects fraud and tortious interference claims. The alleged fraud was of the “defendant made a promise it had no intention of ever performing” variety. Given the lack of a promise, this claim was difficult. The tortious interference claims were too vague (there was no specific contract or relationship that was derailed by Twitter’s actions). The court says that TWiT can replead the tortious interference claim with more specific allegations. (The trademark and tortious interference claims may be brought again in an amended complaint, and will be subject to another round of briefing.)
Contract claims based on informal discussions—whether text message or email, or during the course of a show—are always interesting. We’ve blogged many such disputes. Today, La Porte’s letter would have generated a response from Twitter’s legal department, or at least a response heavily vetted by legal. But in 2009, a few years into Twitter’s existence, it’s not surprising that Ev would shoot off a “don’t worry” email in response to a trademark threat. It could have turned into a legal headache, but it gets no play with the court.
The idea of an agreement being hashed out on the show is interesting, and I wonder if that’s what the parties really intended, or whether TWiT is trying to find anything to hang its hat on. Either way, TWiT’s decision to approach this from the casual standpoint left it with no legal certainty.
All of this raises the question of whether TWiT should have been aggressive in its trademark enforcement efforts. It’s tough to say whether it should have back then, but the answer now is almost certainly not. From an optics standpoint, it looks like the classic trademark lawsuit against an established company that’s not necessarily motivated by concerns over confusion. Does anyone really think a consumer seeing Twitter’s video product would think it’s affiliated with TWiT?
[* Both Eric and I have appeared numerous times on This Week in Law (TWiL), hosted by Denise Howell. The show is a part of the TWiT network.]
Case citation: TWiT, LLC v. Twitter Inc., 2018 WL 2431474 (N.D. Cal. May 30, 2018).
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